MASSACHUSETTS SCHOOL OF LAW
Writing, Research, & Trial Advocacy
Fall 2012-Closed Memorandum Authorities
Part III Courts, Judicial Officers and Proceedings in Civil
Cases (chapters 211 through 262)
Title II Actions and Proceedings Therein
Chapter 223A Jurisdiction of Courts of the Commonwealth
Over Persons in Other States and Countries
Section 3 Transactions or Conduct for Personal
Jurisdiction
Section 3. A court may exercise personal jurisdiction over a person, who acts directly or by an
agent, as to a cause of action in law or equity arising from the person’s
(a) transacting any business in this commonwealth;
(b) contracting to supply services or things in this commonwealth;
(c) causing tortious injury by an act or omission in this commonwealth;
(d) causing tortious injury in this commonwealth by an act or omission outside this
commonwealth if he regularly does or solicits business, or engages in any other persistent
course of conduct, or derives substantial revenue from goods used or consumed or services
rendered, in this commonwealth;
(e) having an interest in, using or possessing real property in this commonwealth;
(f) contracting to insure any person, property or risk located within this commonwealth at
the time of contracting;
(g) maintaining a domicile in this commonwealth while a party to a personal or marital
relationship out of which arises a claim for divorce, alimony, property settlement, parentage
of a child, child support or child custody; or the commission of any act giving rise to such a
claim; or
(h) having been subject to the exercise of personal jurisdiction of a court of the
commonwealth which has resulted in an order of alimony, custody, child support or property
settlement, notwithstanding the subsequent departure of one of the original parties from the
commonwealth, if the action involves modification of such order or orders and the moving
party resides in the commonwealth, or if the action involves enforcement of such order
notwithstanding the domicile of the moving party.
Hasbro Inc. v. Clue Computing Inc., 994 F. Supp. 34 (D.
Mass. 1997)
Opinion
MEMORANDUM AND ORDER
WOODLOCK, District Judge.
Plaintiff Hasbro brings this suit against Clue Computing, a Colorado company, for
trademark infringement upon the CLUE® trademark. Hasbro, the owner of the CLUE®
mark for the game CLUE, alleges that Clue Computing has infringed upon its trademark
rights through use of a World Wide Web site at the address of “clue.com.” Defendants have
moved to dismiss the case pursuant to Federal Rule of Civil Procedure 12(b)(2) for lack of
personal jurisdiction or, in the alternative, to transfer venue pursuant to 28 U.S.C. § 1404(a).
Plaintiff Hasbro has shown sufficient contacts by the defendant with Massachusetts to
enable this court to exercise jurisdiction over the defendant. In addition, I find plaintiff's
choice of forum is appropriate. Accordingly, I will deny the defendant's motion.
I. BACKGROUND
A. The Internet
The Internet is a giant electronic network which connects the smaller networks of the world.
The Internet was developed by the Department of Defense's Advanced Research Project
Agency 25 years ago in order to link the computer systems of universities, government
agencies, and other research organizations. Since then, the activity generated by the
Internet, as well as the size of the Internet itself, has grown exponentially. Today, the
Internet serves approximately 90 million individuals, linking those persons (or, more
accurately, their computers) through global telecommunication lines. See generally ACLU v.
Reno, 929 F.Supp. 824, 830–38 (E.D.Pa.1996), aff'd, 521 U.S. 844, 117 S.Ct. 2329, 138
L.Ed.2d 874 (1997). The World Wide Web is one part of the Internet which allows for the
display of graphic materials, photos, text and audio. Individuals around the world can easily
access and interact with the World Wide Web. Information is “published” on the Internet by
any individual working with the proper software in their home or business. Because of the
ease of producing the “Web pages” or “Web sites,” a vast array of information has
accumulated on the World Wide Web. Users access such information by either typing in an
address or using any of several “search engines,” software and database architecture that
explores the Web, that seek to locate particular text requested by the user. World Wide Web
addresses take two forms. A unique numeric address identifies each site along with a *37
unique corresponding alphanumeric address, known as a “domain name.”
The explosive growth of the Internet has sparked new debates in the law. “Cyberspace” poses
new issues regarding copyrights and Internet sites, First Amendment inquiries, trademark,
and personal jurisdiction issues. Conflicts involving trademark issues, such as those in this
case, easily erupt from the choice of domain names. The registration and assignment of
domain names occurs through Network Solutions, Inc. (“NSI”), a corporation under contract
with the Internet Network Information Center (“InterNIC”). Domain names are organized on
two levels. The first level domain name indicates the type of organization, e.g. “.edu” for
educational institutions, “.com” for commercial organizations, “.gov” for government
organizations. In addition to the suffix, one other character string, chosen by the creator,
makes up a unique specific address, or the domain name. This poses a problem where several
different companies conduct businesses under the same mark, which each would like to use.
This problem has been further amplified by individuals who capitalize upon the issue, trying
to “scoop up” available Web sites that might later be in demand by large companies. These
individuals have been termed “cyber-squatters.” As expected, litigation has resulted when
the individuals or companies own the trademark on the name contained within the address.
See Howard G. Zaharoff & Thomas W. Evans, Cyberspace and the Internet: Law's Newest
Frontier, Boston B.J., May/June, 1997, at 14; Kenneth Sutherlin Dueker, Trademark Law
Lost in Cyberspace: Trademark Protection for Internet Addresses, 9 Harv. J.L. & Tech. 483
(1996); Alan J. Hartnick, Copyright & Trademark on the Internet—And Where to Sue, 217
N.Y.L.J. 5 (February 21, 1997). The instant case does not contain allegations of “cybersquatting,” but does involve a trademark dispute over an Internet Web site address.
B. Defendant Clue Computing, Inc.
Clue Computing is a Colorado corporation located in Longmont, Colorado. It is in the
business of computer consulting. Created in 1994 as a partnership, Clue Computing is now
under the ownership of Eric Robison.1 (Robison Aff. ¶ 1.) Robison is the sole full-time
employee of Clue Computing and Clue Computing has no offices outside of Longmont,
Colorado. Id.
Clue Computing has served less than a dozen clients during its existence. In 1994, Clue
Computing's revenues totaled approximately $40,000. (Dep. of Eric Robison, Pl.'s Ex. 4 at
19.) In that year, Clue Computing served approximately four clients, all located in Colorado.
Id. at 19–20. In 1995, Clue Computing's revenues increased to between $80,000 and
$100,000, and in 1996 Clue's revenues totaled approximately $40,000. Id. at 19. In those
years, Clue Computing worked for Grumman Systems Support Corporation; Matsushita; EG
& G; University of Texas; and Professional Training Services (PTS). The work for those
companies brought Robison to Canada, Texas, New York, California, Arizona, Maryland,
Georgia, and Antarctica. (Pl.'s Ex. 4.)
Clue Computing's work for PTS originated when PTS contacted Comtrix, a Colorado
company, to find trainers and was referred to Clue Computing. PTS needed trainers to fulfill
a contract for Digital Equipment Corporation, a Massachusetts company. For PTS, Clue
Computing traveled to many locations and trained employees of Digital Canada and DEC
America, as well as other companies, not related to Digital. Robison was aware that Digital
was a Massachusetts-based company and traveled under the Digital travel accounts. (Pl.'s
Ex. 4 at 109–10, Pl.'s Ex. 13.) PTS paid Robison after receiving payment from Digital. (Pl.'s
Ex. 13.)
*38 Robison has never been to Massachusetts. Other than PTS, none of his clients have been
associated with Massachusetts. Clue Computing's phone records show that during the
company's existence, its employees have made eight calls to Massachusetts. In addition, Clue
Computing purchased software from FTP software, a Massachusetts company.
Defendant Clue Computing owns the “clue.com” Web site. 2 The company uses the Web site to
advertise its business, including Internet consulting, training, system administration and
network design and implementation. On its Web site, Clue states, “Clue will go to any
customers site! Clue's own Eric Robison traveled to Antarctica for the 1995–1996 field
season.” (Pl.s Ex. 7) (emphasis in original.) The Web site offers the address, phone number,
and email address for the company. In addition, those Internet users who view the site can
instantly email the company by clicking on the page. Id. On another page of its Web site,
Clue computing also states, “Location: Clue is a completely virtual company; the employees
telecommute or work at client sites. It can be said, that the center of gravity of Clue
Computing lies somewhere in Longmont, Colorado, USA. Clue provides services for clients
anywhere on the planet.” Furthermore, the site advertises, ‘‘Clients: Clue Computing
provides services for many organizations, including: Digital Equipment Corporation....”
Additionally, several individuals use the “clue.com” site for personal email and Web sites. Id.
(emphasis in original.)
C. Plaintiff Hasbro, Inc.
Hasbro, Inc. designs, manufactures and markets children's toys and related items. In 1944,
Hasbro invented the CLUE® board game, a murder mystery game where participants
attempt to discover which character committed a murder in which room with which weapon.
The name CLUE® has been registered as a trademark of Hasbro since 1950. Currently,
Hasbro is developing CD–ROM versions of their traditional games. These games are
available on the World Wide Web, e.g. MONOPOLY® game at “monopoly.com,”
SCRABBLE® game at “scrabble.com,” and others. The CD–ROM version of the CLUE® has
been developed as well. However, in 1996 Hasbro discovered that Clue Computing owned the
domain name “clue.com.”
Hasbro is a Rhode Island corporation, with its largest facility in Beverly, Massachusetts.
Parker Brothers, the developer and marketer of CLUE® game, and Hasbro Interactive, the
developer and marketer of the electronic version of CLUE® game, are located in
Massachusetts. The majority of Hasbro's American employees, over 2500 of its 6500, are in
Massachusetts. (Dec. of John McCann, III ¶ 6). In addition, Hasbro has more facilities in
Massachusetts, over 2 million square feet, than in any other state. Id. Hasbro initiated suit
in Massachusetts because of the location of Parker Brothers and Hasbro Interactive, but also
because most, if not all, of its witnesses are located in Massachusetts. (Id., ¶ 8.) Witnesses
will include, among others, marketing and advertising employees from Parker Brothers who
will testify regarding expenses incurred in promoting and protecting the mark, Hasbro
Interactive employees who will testify about the CD revision of the game and the Internet,
and Hasbro accounting people, who will testify to effects of dilution of the mark. (Id., ¶ 10.)
D. Procedural History
Under the rules of NSI, the organization which registers domain names, any evidence of
violation of a registered trademark requires NSI to put the domain name on hold status, not
to be available for use by any party, pending resolution of the dispute. (Pl.s Ex. 8.) Therefore,
in 1996, NSI, after being notified by Hasbro of a potential trademark violation, contacted
Clue Computing to inform Robison that his Internet site would be frozen. Clue Computing
then filed suit in state court in Colorado and received an injunction on June 28, 1996,
forbidding NSI from altering Clue Computing's use of “clue.com.” *39 That injunction is still
in effect, pending resolution of this case.3 (Def.'s Ex. A.)
II. Applicable Case Law
A. Personal Jurisdiction: Burden and Evidentiary Showing
Defendant moves pursuant to Federal Rule of Civil Procedure 12(b)(2) for dismissal of this
action for lack of personal jurisdiction. The plaintiff, Hasbro, bears the burden of establishing
that Clue Computing's conduct satisfies the requirements of the Massachusetts long-arm
statute and that the exercise of jurisdiction pursuant to the statute satisfies the strictures of
the Constitution. Foster–Miller, Inc. v. Babcock & Wilcox Canada, 46 F.3d 138, 145 (1st
Cir.1995); Droukas v. Divers Training Academy, Inc., 375 Mass. 149, 150, 376 N.E.2d 548
(1978).
Although the plaintiff has the burden of showing that jurisdiction exists, the district court
must determine what evidentiary showing the plaintiff must make for the case to survive the
defendant's motion to dismiss. To guide this inquiry, the First Circuit, in Boit v. Gar–Tec
Products, Inc., 967 F.2d 671 (1st Cir.1992), formulated three standards that might be
employed when evaluating the motion. The most conventional of these methods, the prima
facie approach—which I employ here—permits the district court “to consider only whether
the plaintiff has proffered evidence that, if credited, is enough to support findings of all facts
essential to personal jurisdiction.” Id. at 675. However, in making the proffer, the plaintiff
cannot rest upon the pleadings, but rather is obliged “to adduce evidence of specific facts,”
id., which the court accepts as true for the purpose of determining the adequacy of the ...
showing.” Foster–Miller, 46 F.3d at 145. This approach is appropriate when the facts which
would support jurisdiction are not in dispute. Boit, 967 F.2d at 676. In the present case, then,
Hasbro bears the burden of establishing a prima facie case supporting jurisdiction.
Personal jurisdiction implicates the power of the court over the defendant. This power is
informed by a two-fold determination by the court: first, whether the assertion of jurisdiction
over the defendant is authorized by the forum state's long-arm statute, here Mass. Gen.
Laws Ann. Ch. 223A, § 3 (West 1997); and second, whether the exercise of jurisdiction
pursuant to the statute comports with the due process requirements of the United States
Constitution. Foster–Miller, 46 F.3d at 144.
B. Personal Jurisdiction: Case Law and the World Wide Web
Although traditional approaches dictated by the Supreme Court and First Circuit must be
applied in evaluating personal jurisdiction, these concepts should be sensitive to the unique
nature of cyberspace, a non-traditional medium through which the contacts between the
defendant and the forum state can occur. Since information posted on a Web site becomes
available world-wide almost instantaneously, imposing traditional concepts on commercial
Internet users might have dramatic implications, subjecting them to nationwide or even
international jurisdiction.
The popularity of the World Wide Web is providing courts the opportunity to examine their
traditional reaches based on a corporation's computer-based contacts. To date, the case law
in this area is limited. Indeed, “[w]ith this global revolution looming on the horizon, the
development of the law concerning the permissible scope of personal jurisdiction based on
Internet use is in its infant stages.” Zippo Mfg. Co. v. Zippo Dot Com, Inc., 952 F.Supp. 1119,
1123 (W.D.Pa.1997). A review of the cases involving the World Wide Web and personal
jurisdiction reveals that the courts that have addressed this issue are reaching conflicting
results. See Gwenn M. Kalow, From the Internet to Court: Exercising Jurisdiction Over World
Wide Web *40 Communications, 65 Fordham L.R. 2241 (1997); David L. Stott, Personal
Jurisdiction in Cyberspace: The Constitutional Boundary of Minimum Contacts Limited to a
Web Site, 15 J. Marshall J. Computer & Info. L. 819 (1997). I will address the current body of
Web site personal jurisdiction case law before discussing traditional personal jurisdiction
jurisprudence.
1. Web Site Personal Jurisdiction Case Law
In cases where the courts have conferred jurisdiction, they seem to rely upon facts other than
the Web site in making their determination. However, it also appears from the case law that
courts are in dispute as to what type of additional activity, other than the Web site, is
necessary to avail a defendant of a forum's laws.
Some courts have relied upon contracts between the two parties. For instance, in Digital
Equip. Corp. v. Altavista Tech., 960 F.Supp. 456 (D.Mass.1997), Judge Gertner focused upon
the fact that defendant had a licensing agreement with the plaintiff, a Massachusetts
corporation, and had made sales to at least three Massachusetts residents in her decision to
exercise jurisdiction. Judge Gertner highlighted these additional, non-Web contacts,
emphasizing that “[t]here is no issue of parties being haled into courts of a given jurisdiction
solely by virtue of a Web-site, without meaningful notice that such an outcome was likely.”
Id. at 463.
Two other courts relied upon the existence of contracts between the defendants and residents
of the forum state for the assertion of jurisdiction. In CompuServe, Inc. v. Patterson, 89 F.3d
1257 (6th Cir.1996), the Sixth Circuit found that the defendant's contract with the plaintiff,
although created and executed electronically, created sufficient contact to satisfy the
requirements of personal jurisdiction. The court found that the defendant had indeed
“purposefully availed” himself of the privilege of doing business in the forum state when he
agreed that forum state law would govern the contract. In addition, defendant exchanged
multiple Internet communications with and marketed his product solely through plaintiff's
service, located in the forum state.
In Zippo, the defendant used a Web site to advertise and supply applications for its Internet
news service. Although the court recognized that defendant's contacts were “almost
exclusively over the Internet,” it still found them sufficient to allow jurisdiction. With
reasoning similar to that in CompuServe, the court noted that by entering into contracts with
seven Internet access providers in Pennsylvania (the forum state), and selling passwords to
3,000 forum state residents, Zippo, 952 F.Supp. at 1123, defendant made a conscious choice
to conduct business in Pennsylvania, and thus purposefully availed itself of the forum's laws.
Id. at 1126.
The existence of a contract touching the forum state has not been found necessary for the
assertion of personal jurisdiction in other World Wide Web cases. Instead, courts rely upon
different contacts. For example, in EDIAS Software Int'l v. BASIS Int'l Ltd., 947 F.Supp. 413
(D.Ariz.1996) and Resuscitation Tech., Inc. v. Continental Health Care Corp., 65 USLW 2694,
1997 WL 148567 (S.D.Ind.1997), the defendants' sustained interactions with the resident
plaintiffs satisfied jurisdictional requirements. The defendant in EDIAS, in addition to
creating an allegedly defamatory web page, regularly emailed, faxed and phoned the
plaintiff. Similarly, in Resuscitation Technologies, although contacts between the parties
began over the Internet, the defendant emailed, telephoned, sent regular mail and faxed the
plaintiff. Under the circumstances in these two cases, the existence of a Web site is simply
another piece of evidence demonstrating the defendants' purposeful availment of other
states.
In Panavision Int'l, L.P. v. Toeppen, 938 F.Supp. 616 (C.D.Cal.1996), when defendant
intended to scam the plaintiff and knew that the “effects” of the harm would be felt in the
forum state, the court based jurisdiction on a Web site contact alone. The court stated that
defendant's actions, anything but “random, fortuitous or attenuated” justified personal
jurisdiction. Id. at 621–22 (quoting Burger King Corp. v. Rudzewicz, *41 471 U.S. 462, 476,
105 S.Ct. 2174, 85 L.Ed.2d 528 (1985)). In Panavision, the defendant, a “cyber-squatter,” had
registered for many trademarked domain names, including “eddiebauer .com,”
“aircanada.com,” “camdenyards.com,” “frenchopen.com,” and “panavision.com.” The court
found that the defendants' allegedly tortious activities were expressly aimed at the plaintiff
and its state, noting that conduct “was intended to, and did, result in harmful effects in
California.” Panavision, 938 F.Supp. at 622.
A few courts have held that the existence of a World Wide Web site alone is enough to allow
for exercise of personal jurisdiction. In Inset Sys., Inc. v. Instruction Set, Inc., 937 F.Supp.
161 (D.Conn.1996), the court concluded that “advertising via the Internet is solicitation of a
sufficient repetitive nature” to allow jurisdiction. Id. at 164. The defendant, a nearby
Massachusetts corporation, used its Web site and a toll-free number to solicit business from
the forum state. In a similar case, a District of Columbia District Court found that a Web
page soliciting business, along with a toll-free number, and a local newspaper advertisement
provided enough grounds to allow for assertion of jurisdiction. Heroes, Inc. v. Heroes Found.,
958 F.Supp. 1 (D.D.C.1996). The court in Heroes, accusing the defendant of “soft-pedal[ing]”
the significance of its Web site, suggested that the existence of a Web site alone would have
provided the necessary contact. Id. at 4. In Maritz, Inc. v. Cybergold, Inc., 947 F.Supp. 1328
(E.D.Mo.1996), the plaintiff claimed, in a trademark infringement case, that the defendant,
through its interactive Web site, invited jurisdiction by other states. The court noted that
defendant electronically responded “automatically and indiscriminately” to users of the site
regardless of their originating location. Id. at 1333. The court agreed that the defendant, by
creating a Web site that provided information and solicited business to individuals in other
states, subjected itself to cases in other states.
Yet, other cases have not accepted the proposition that the existence of a World Wide Web
site automatically confers jurisdiction upon a state. In Bensusan Restaurant Corp. v. King,
937 F.Supp. 295 (S.D.N.Y.1996), a New York plaintiff brought a trademark infringement
case against a Missouri jazz club. The defendant's Web site, advertising the night club, was
found to be insufficient contact with the forum state to allow jurisdiction. The defendant,
although using the Internet for advertising, only intended to reach a local audience. The
record contained no evidence of any business from New York. In reaching its conclusion, the
court evaluated the Web site in relation to traditional due process factors. Indeed, the court
likened the case to Asahi Metal Indus. Co. v. Superior Ct. of Cal., 480 U.S. 102, 107 S.Ct.
1026, 94 L.Ed.2d 92 (1987): “Creating a site, like placing a product into the stream of
commerce, may be felt nationwide—or even worldwide—but, without more, it is not an act
purposefully directed toward the forum state.” Bensusan, 937 F.Supp. at 301.
In McDonough v. Fallon McElligott, Inc., 40 U.S.P.Q.2d 1826, 1996 WL 753991, *3
(S.D.Cal.1996), the court found that the “fact that [defendant] has a Web site used by [forum
state residents] cannot establish jurisdiction by itself.” The court also rejected the proposition
that a World Wide Web site is purposefully directed at a national audience per se. The
defendant in McDonough, a Minnesota advertising agency, had clients who sold products to
California, but did not do direct business with the state. On that basis, the court granted a
motion to dismiss.
Similarly, in Hearst Corp. v. Goldberger, 1997 WL 97097 (S.D.N.Y.1997), the court found a
lack of personal jurisdiction where a defendant's forum state contacts were limited to a Web
site, which allegedly violated trademark law. The Web site advertised future services
available in a business the defendant planned to create. In addition, the court discounted
defendant's email messages sent to New York in conjunction with the Web site. The court
found them analogous to telephone or letter communications, and therefore “not sufficient to
establish personal jurisdiction.” Id. at *13. The court noted that “Upholding personal
jurisdiction over Goldberger in the present case would, in effect, create national (or even
worldwide) jurisdiction, *42 so that every plaintiff could sue in plaintiff's home court every
out-of-state defendant who established an Internet web site. The Court declines to reach
such a far-reaching result in the absence of a Congressional enactment of Internet specific
trademark infringement personal jurisdictional legislation.” Id. at *20.
Most recently, in Smith v. Hobby Lobby Stores, 968 F.Supp. 1356 (W.D.Ark.1997), the court
dismissed a case against a Hong Kong defendant who maintained a Web site. The court
found that the defendant did not contract to sell any goods or services to any citizens of
Arkansas over the Internet, and at most advertisements appear on the Internet. However,
such advertising was not directed at the state of Arkansas. As such, the court held that the
defendant had insufficient contact with the state to support a lawsuit against them in the
state.
2. Traditional Analyses and the World Wide Web
As the review of the Web site case law suggests, courts currently use traditional
jurisdictional analysis models to analyze Web jurisdictional issues. Perhaps the traditional
framework most analogous to posting information on the World Wide Web is placing a
product into the “stream of commerce.” In Asahi Metal Indus. Co. v. Superior Ct. of Cal., 480
U.S. 102, 107 S.Ct. 1026, 94 L.Ed.2d 92 (1987), Justice O'Connor adopted a narrow
interpretation of the stream of commerce concept, writing for a plurality that “placement of a
product into the stream of commerce, without more,” is not enough to satisfy the purposeful
availment requirement for minimum contacts. Id., 480 U.S. at 112. Instead, Justice O'Connor
focused on deliberate availment, requiring additional conduct of the defendant which
“indicate[s] an intent or purpose to serve the market in the forum State.” Id. Advertising in
the forum state might be one such indication. Id.
Although the Internet's stream of commerce is much more ubiquitous and instantaneous
than the product liability type stream of commerce, courts can use the Asahi inquiry to
determine whether Web site publishing occurring outside of the forum state is intentionally
directed toward that state. As discussed more fully above, current Internet jurisdictional
case law has generally followed the Asahi reasoning, relying upon facts other than the Web
site in exercising jurisdiction.
Another case with apparent application in the Web jurisdictional context is Keeton v. Hustler
Magazine, Inc., 465 U.S. 770, 104 S.Ct. 1473, 79 L.Ed.2d 790 (1984). In Keeton, the Court
held that the defendant's regular circulation of magazines in the forum state constituted
sufficient contacts for an assertion of jurisdiction for an action of libel arising from the
contents of a magazine. The Court found that defendant's behavior, which “[could not] by any
stretch of the imagination be characterized as random, isolated, or fortuitous, satisfied the
requirements of due process.” Id., 465 U.S. at 774. However, application of the principles of
Keeton to Internet cases requires refinement. For while magazine publishers can
affirmatively decide not to sell or distribute magazines in certain forums, this option of
bypassing particular regions is not yet available to Web site providers. (Robison Aff. ¶ 8(c).)
III. Massachusetts Long–Arm Statute
The Massachusetts long-arm statute provides several bases for a Massachusetts court, or a
federal court in Massachusetts, to assert jurisdiction over a nonresident defendant. Tatro v.
Manor Care, Inc., 416 Mass. 763, 767, 625 N.E.2d 549 (1994). The statute reads, in relevant
part:
A court may exercise personal jurisdiction over a person, who acts directly or
by an agent, as to a cause of action in law or equity arising from the person's
... (d) causing tortious injury in this commonwealth by an act or omission
outside the commonwealth if he regularly does or solicits business, or engages
in any other persistent course of conduct, or derives substantial revenue from
goods used or consumed or services rendered, in this commonwealth.
Mass. Gen. Laws Ann. ch. 223A, § 3 (West 1997) (emphasis added).
Section 3(d) requires that the defendant committed a tort in Massachusetts based on acts
committed elsewhere, coupled with either regular solicitation of business, continuing
contacts, or the derivation of substantial revenue from the commonwealth. The present case
involves allegations by Hasbro that a tortious damage—trademark dilution—was suffered in
Massachusetts. The “tort” of infringement involves the use of a registered mark that is likely
to cause confusion. In proving the tort, it is not necessary to show actual confusion, Keds
Corp. v. Renee Int'l Trading Corp., 888 F.2d 215, 218 (1st Cir.1989) (citing Pignons S.A. de
Mecanique v. Polaroid Corp., 657 F.2d 482, 490 (1st Cir.1981)), but rather, a likelihood of
confusion. It is this likelihood of confusion which creates a two fold injury: to the trademark
owner through loss of good will and to the public due to confusion by similar marks.
In this case, the alleged trademark infringement can be said to harm Parker Brothers and
Hasbro Interactive, makers of the Clue® board game and the Clue® interactive game. Both
divisions of Hasbro are based in Beverly, Massachusetts. Residents of Massachusetts are
also injured because, it is suggested, Clue Computing's domain name may invoke thoughts of
the Clue® board and CD ROM games. Satisfied that the alleged tort has been adequately
alleged to have been committed in Massachusetts, my § 3(d) inquiry must shift to whether
Clue Computing's activities in Massachusetts amount to regularly “solicit[ing] business,” as
contemplated by the statute.
*44 Although Clue Computing's Web site is published from its office in Colorado, it is
available nation-wide and has undoubtedly been accessed by Massachusetts residents. In
fact, Clue Computing produced a Web site precisely because it wanted to reach a larger
customer base. Indeed, as Eric Robison stated, the Web site's entire purpose is advertising.
(Pl.'s Ex. 5, at 13–14.) Further, the Web site explicitly states that Clue Computing will
provide services to any customer site. Accessible 24 hours a day and seven days a week to all
Massachusetts residents, the Web site, in essence, serves as a national magazine, in which
Clue Computer continuously advertises. As part of its advertising, Clue lists Digital, a
Massachusetts company, as one of its clients, presumably hoping to attract new customers
with Digital's name recognition. By maintaining a Web site which can be continuously
accessed by Massachusetts residents, combined with the actions discussed above, Clue
Computing does regularly solicit business in Massachusetts through its Web site, and
therefore satisfies the jurisdictional requirements of § 3(d). I find that Hasbro has met its
burden of establishing at this stage in the litigation that Clue Computing's conduct meets
the requirements of the state long-arm statute.
VI. CONCLUSION
For the reasons set forth more fully above, I DENY the motion to dismiss for lack of personal
jurisdiction or to transfer the action.
Connecticut Nat. Bank v. Hoover Treated Wood Products,
Inc., 37 Mass. App. Ct. 231, 638 N.E.2d 942, 943 (1994).
**943 *231 Lawrence Rizman, Boston, for plaintiff.
Jeffrey N. Shribman, Salem, for defendant.
Before ARMSTRONG, DREBEN and GILLERMAN, JJ.
Opinion
GILLERMAN, Justice.
We must decide whether the Superior Court may properly exercise jurisdiction over the
defendant under the Massachusetts long-arm statute, G.L. c. 223A, § 3. Confining the
analysis to the plaintiff's assertion that its claim arose out of the business transacted by the
defendant with P.F. O'Connor, Inc. (O'Connor), see Good Hope Indus., Inc. v. Ryder Scott Co.,
378 Mass. 1, 10 n. 17, 389 N.E.2d 76 (1979), we *232 conclude that the Superior Court has
jurisdiction of this controversy, and the defendant's motion to dismiss under Mass.R.Civ.P.
12(b)(2), 365 Mass. 755 (1974), should have been denied. Accordingly we reverse and remand
the case to the Superior Court for further proceedings.
The material facts, which are drawn from the written submissions of the parties, are not in
dispute. In exchange for a loan made to O'Connor,1 a Massachusetts company in the
wholesale and retail lumber business in Massachusetts, the plaintiff (the bank), which has a
principal place of business in Boston,2 acquired a perfected security interest in O'Connor's
existing and after-acquired inventory. The underlying security agreement prohibited
O'Connor from disposing of its inventory other than in the ordinary course of its business. 3
The defendant (Hoover), a Delaware corporation with its principal place of business in
Atlanta, Georgia, ships wood products to retailers and distributors in Massachusetts and
elsewhere; among its customers was O'Connor. O'Connor, in financial difficulty, telephoned
Hoover in the fall of 1990 to arrange the delivery of certain lumber in **944 exchange for
credit against an antecedent debt O'Connor owed Hoover. After a series of phone calls and
correspondence between Hoover and O'Connor, it was agreed that the lumber would be
delivered to Hoover in exchange for a credit memo to O'Connor in the amount of $45,766.12.
The inventory was transported to Hoover in early November, 1990-a disposition of
O'Connor's inventory that the bank claims violated the security *233 agreement. The bank
demanded the return of the lumber; Hoover refused.4 The bank responded by bringing suit in
the Superior Court setting up the claim that Hoover was a converter of goods rightly
belonging to the bank.5
The exercise of personal jurisdiction over a foreign defendant is proper only when (i) the
terms of the Massachusetts long-arm statute, G.L. c. 223A, § 3, are met and (ii) the
constitutional requirements of due process are satisfied. See Good Hope Indus., Inc. v. Ryder
Scott Co., 378 Mass. at 5-6, 389 N.E.2d 76. It is the plaintiff who has the burden of proving
that the court has jurisdiction over the defendant. See, e.g., Droukas v. Divers Training
Academy, Inc., 375 Mass. 149, 151, 376 N.E.2d 548 (1978); Kleinerman v. Morse, 26
Mass.App.Ct. 819, 820, 533 N.E.2d 221 (1989). We accept as true the uncontroverted facts
that appear in the materials presented to the Superior Court. See, e.g., Heins v. Wilhelm Loh
Wetzlar Optical Mach. GmbH Co. KG, 26 Mass.App.Ct. 14, 16, 522 N.E.2d 989 (1988); Maker
v. Bermingham, 32 Mass.App.Ct. 971, 972, 592 N.E.2d 1339 (1992).
We turn to the question whether Hoover was transacting business in Massachusetts. Section
3(a ) of G.L. c. 223A, as amended by St.1969, c. 623, grants jurisdiction “over a person ... as to
a cause of action in law or equity arising from the person's ... transacting any business in this
commonwealth.”6
*234 The Supreme Judicial Court has read the “transacting any business” language of § 3(a )
broadly, “in keeping with our view that the Massachusetts long-arm statute ‘functions as “an
assertion of jurisdiction over the person to the limits allowed by the Constitution of the
United States.” ’ ” Tatro v. Manor Care, Inc., 416 Mass. 763, 771, 625 N.E.2d 549 (1994),
quoting from Good Hope Indus., Inc. v. Ryder Scott Co., 378 Mass. at 6, 389 N.E.2d 76.
“Although an isolated (and minor) transaction with a Massachusetts resident may be
insufficient, generally the purposeful and successful solicitation of business from residents of
the Commonwealth ... will suffice to satisfy [the “transacting any business”] requirement.”
Tatro v. Manor Care, Inc., supra at 767, 625 N.E.2d 549.
Hoover emphasizes that it has no office, agents, or assets in Massachusetts, and there is no
allegation or evidence it advertised here. What Hoover overlooks is the substantial volume of
business it did with O'Connor in Massachusetts. The exhibits filed by the bank in opposition
to the motion to dismiss show that, from April through August of 1990, Hoover, in more than
thirty separate transactions, shipped lumber to O'Connor in Massachusetts. The aggregate
sales price of those shipments was more than $375,000. Hoover's business with O'Connor
was hardly an “isolated transaction.” Contrast **945 Droukas v. Divers Training Academy,
Inc., 375 Mass. at 154, 376 N.E.2d 548. To the contrary, this volume of business reveals a
“purposeful and successful solicitation of business from residents of the Commonwealth ...,”
Tatro v. Manor Care, Inc., supra at 767, 625 N.E.2d 549, and, contrary to the judge's ruling,
satisfies the “transacting any business” requirement.
We turn to the “arising from” clause in § 3(a ): whether the alleged conversion arose from
Hoover's transaction of business in the Commonwealth. In Tatro v. Manor Care, Inc., 416
Mass. at 770-771, 625 N.E.2d 549, the Supreme Judicial Court held that the “arising from”
language in G.L. c. 223A, § 3 “should be interpreted as creating a ‘but for’ test.” Rejecting the
analysis in Marino v. Hyatt Corp., 793 F.2d 427, 428-430 *235 (1st Cir.1986), and Pizarro v.
Hoteles Concorde Intl., C.A., 907 F.2d 1256 (1st Cir.1990) (the issue is whether the business
transacted “can be said to be the legal, or proximate cause of the injuries suffered by a
plaintiff”), the court followed the cases decided in the Fifth, Sixth, and Ninth Circuits.
Adopting the language of Lanier v. American Bd. of Endodontics, 843 F.2d 901, 909 (6th
Cir.), cert. denied, 488 U.S. 926, 109 S.Ct. 310, 102 L.Ed.2d 329 (1988), the court said “a
claim arises from a defendant's transaction of business in the forum State if the claim was
made possible by, or lies in the wake of, the transaction of business in the forum State.”
Tatro v. Manor Care, Inc., supra 416 Mass. at 771, 625 N.E.2d 549. The fact that the claim
sounds in tort and that the business transacted is contractual in character is not
determinative, for “the contractual contact is a ‘but for’ causative factor for the tort since it
brought the parties within tortious ‘striking distance’ of each other.” Id. at 770, 625 N.E.2d
549, quoting from Prejean v. Sonatrach, Inc., 652 F.2d 1260, 1270 n. 21 (5th Cir.1981).
Here, the return of the lumber by O'Connor, and the subsequent alleged conversion by
Hoover, would not have occurred but for Hoover's substantial volume of sales of lumber to
O'Connor in Massachusetts. Thus, it can fairly be said that the bank's claim against Hoover
for conversion was “made possible by, or lies in the wake of,” Hoover's transacting business
in Massachusetts. Asserting jurisdiction in this case, as we do, is consistent with the well
established view that the long-arm statute is an assertion of jurisdiction to the limits allowed
by the Constitution of the United States. Tatro v. Manor Care, Inc., supra at 771, 625 N.E.2d
549.
The fact that the bank was not a party to Hoover's lumber sales in Massachusetts is of no
consequence; what matters is that Hoover regularly sold and delivered substantial quantities
of lumber to O'Connor in Massachusetts, and but for the ongoing contractual arrangements
between Hoover and O'Connor and the ensuing transfer of lumber from O'Connor's inventory
the bank would not have suffered any injury. Further, the bank's filed financing statements
disclosed *236 to any interested party the bank's interest in O'Connor's inventory. 7 The fact
that Hoover was aware of O'Connor's pressing financial difficulties only emphasizes the
point.
Finally, we consider whether requiring Hoover to defend itself in Massachusetts comports
with due process. The issue is “whether there was some minimum contact with the
Commonwealth which resulted from an affirmative, intentional act of the defendant, such
that it is fair and reasonable to require the defendant to come into the State to defend the
action.” Good Hope Indus., Inc. v. Ryder Scott Co., 378 Mass. at 7, 389 N.E.2d 76. We
conclude that Hoover's due process rights will not be offended by requiring it to defend itself
in Massachusetts.
As we have previously noted, Hoover's contacts with Massachusetts were not isolated or
random events. Cf. “Automatic” Sprinkler Corp. of America v. Seneca Foods Corp., 361 Mass.
441, 280 N.E.2d 423 (1972) (purchase of single item from Massachusetts company,
accompanied by partial payment, held insufficient to confer long-arm jurisdiction where it
had little impact on Massachusetts commerce); Droukas v. Divers Training Academy, Inc.,
375 Mass. at 153-154, 376 N.E.2d 548 (isolated transaction where defendant's only business
within Commonwealth **946 was the single sale and shipment of two engines). Like the
defendant in Good Hope Indus., Inc. v. Ryder Scott Co., 378 Mass. at 9, 389 N.E.2d 76, the
defendant here had “engaged in an enterprise of substantial dimension and duration with a
party whose business headquarters ... were ... in Massachusetts.” As noted, its regular
shipments of lumber to O'Connor alone8 amounted to more than $375,000 in a four-month
*237 period. “Had ... [Hoover] not desired to expose itself to a claim of Massachusetts
jurisdiction, it was within its power to refuse to deal” with O'Connor. Id. at 12, 389 N.E.2d
76.
In view of the result we reach, we need not consider the bank's appeal from the denial of its
second motion for relief from judgment.
The judgment is reversed, and the case is remanded for further proceedings.
So ordered.
MCL Associates, Inc. v. Heidelberg Web Sys., Inc., 2000 Mass.
App. Div. 147 (Dist. Ct. 2000).
Alan R. Goodman, for Plaintiff.
Kathleen M. Guilfoyle, Boston, for Defendant.
WHEATLEY, P.J., WELSH and CREEDON, JJ.
Opinion
WELSH, J.
*1 The issue in this case is whether there exists a basis for the exercise of personal
jurisdiction under G.L. c. 223A, § 3(a).
The plaintiff, M.C.L. § Associates, Inc. (“MCL”), a Massachusetts corporation having a usual
place of business in Canton, Mass., brings this action for breach of contract, breach of the
implied covenant of “good faith,” and for a violation of G.L. c. 93A, against Heidelberg Web
Systems, Inc. (“Heidelberg”), a Delaware corporation with a principal place of business in
New Hampshire.
Heidelberg has no place of business in Massachusetts, nor does it own real estate or other
assets here. Heidelberg is engaged in the business of the manufacture and sale of web
presses. Although Heidelberg occasionally sells web presses in Massachusetts, the contract
sub judice is not concerned with the sale or delivery of web presses. The plaintiff is engaged
in the business of discovery, location and recovery of unclaimed, uncollected or uncashed
funds from government agencies and location of the beneficial owners of such claims. It
contracts with the owners to collect the sums due for a fee based upon a percentage of the
amount collected.
In the Fall of 1998, the plaintiff contacted the defendant at its place of business in New
Hampshire. The defendant accepted the plaintiff's written proposal in New Hampshire to
collect an account due the defendant from the State of Illinois. A letter of authorization was
sent by Heidelberg to M.C.L. § to initiate the recovery process. Pursuant to the agreement,
the plaintiff contacted the comptroller of the State of Illinois as part of the “recovery process.”
The contacts with the comptroller in Illinois were made from plaintiff's Canton office. The
complaint alleged that Heidelberg breached the contract by preventing the plaintiff from
proceeding further.
We conclude that the facts presented are insufficient for the exercise of personal jurisdiction
under G.L. c. 223A, § 3(a).
*2 Fully cognizant that a fact-sensitive inquiry is required in each case, we begin our inquiry
as to whether or not there were sufficient contacts in this Commonwealth in the conduct of
the defendant's business to warrant the imposition of personal jurisdiction. Good Hope
Industries, Inc. v. Ryder Scott Co., 378 Mass. 1, 2, 389 N.E.2d 76 (1979), citing Great Western
United Corp. v. Kidwell, 577 F.2d 1256 (5th Cir.1978). A qualitative as well as quantitative
analysis of activities engaged in by the defendant is required. Of particular importance in
assessing the sufficiency of the defendant's activities in this state for purposes of submitting
to personal jurisdiction is whether the defendant “purposefully” engaged in activities in
Massachusetts. See Haddad v. Taylor, 32 Mass.App.Ct. 332, 335, 588 N.E.2d 1375 (1992).
The defendant is a Delaware corporation with a plant in New Hampshire in the business of
manufacturing web presses. Although some web presses were sold in this state, the
transaction upon which this course of action is based does not relate in any way to the sale or
delivery of defendant's products in Massachusetts. Rather, the plaintiff's engagement was to
collect past due and possibly overlooked accounts receivable for a fee based upon a
percentage of the amount collected. The contract was entered into in New Hampshire. There
was no exchange of visits between personnel of M.C.L. § and Heidelberg. While there was
occasional correspondence relative to the “recovery process,” this was incidental at best to the
main purpose of the contract.
While the “recovery” process was conducted chiefly by correspondence from the plaintiff's
office in Canton, Mass., there was no requirement that the business be done from this state.
From the defendant's viewpoint, a specific result was the object of the contract, viz, the
recovery of lost or forgotten accounts. The defendant neither super-intended nor chose the
means or manner the plaintiff used to accomplish this end. In this case, the effect of the nonresident defendant's activity on the commerce of the Commonwealth was negligible. Droukas
v. Divers Training Academy, Inc., 375 Mass. 149, 376 N.E.2d 548 (1978).1 The defendant did
not engage in a series of activities or a course of conduct that amounts to a purposeful
availing of the privilege to conduct activities in the forum state, thus invoking the benefits or
protection of its laws. Hanson v. Denckla, 357 U.S. 235, 253, 78 S.Ct. 1228, 2 L.Ed.2d 1283
(1958). See “Automatic” Sprinkler Corp. of American v. Seneca Foods Corp., 361 Mass. 441,
444, 280 N.E.2d 423 (1972).
We conclude that the activities of the defendant in this Commonwealth are too attenuated to
afford a basis for the exercise of personal jurisdiction. The order denying the motion to
dismiss is vacated. A judgment is to enter dismissing the action for want of personal
jurisdiction.