110 F.Supp.2d 332 (D.N.J. 2000), Civ. A. 00-1108, Amberson Holdings LLC v. Westside Story Newspaper

Docket Nº:Civ. A. 00-1108
Citation:110 F.Supp.2d 332
Party Name:Amberson Holdings LLC v. Westside Story Newspaper
Case Date:August 22, 2000
Court:United States District Courts, 3th Circuit, District of New Jersey

Page 332

110 F.Supp.2d 332 (D.N.J. 2000)

56 U.S.P.Q.2d 1847



WESTSIDE STORY NEWSPAPER, Wallace J. Allen and W.J. Allen Multimedia Productions, Inc.

No. CIV.A. 00-1108 NHP.

United States District Court, D. New Jersey.

Aug. 22, 2000

Page 333

David A. Picon, Proskauer Rose LLP, Newark, NJ, for Plaintiffs.

Dennis W. Blake, Rubenstein, Rudolph, Meyerson & Blake, P.A., Oakland, NJ, Rickey Ivie, Ivie, McNeill & Wyatt, Los Angeles, CA, for Defendants.

POLITAN, District Judge.

Dear Counsel:

This matter comes before the Court on the motion by defendants Westside Story Newspaper, Wallace J. Allen and W.J. Allen Multimedia Productions, Inc., to dismiss the Complaint of plaintiffs Amberson Holdings LLC, and Amberson, Inc., for lack of personal jurisdiction. This matter was resolved without oral argument pursuant to Federal Rule of Civil Procedure 78. For the reasons stated herein, the motion by defendants' Westside Story Newspaper, Wallace J. Allen and W.J. Allen Multimedia Productions, Inc. Motion to Dismiss is GRANTED and the Complaint of plaintiffs is DISMISSED WITHOUT PREJUDICE. Accordingly, this case is CLOSED.


Defendants Westside Story Newspaper, Wallace J. Allen and W.J. Allen Multimedia Productions, Inc. (hereinafter collectively referred to as "defendants"), own and operate a weekly newspaper that is based in Southern California. See Affidavit of Wallace Allen, ¶ 4. It is alleged that Westside is the alter ego of defendants Wallace J. Allen and W.J. Allen Productions, Inc. and vice versa. See id., ¶ 6. Plaintiffs' trademark, "West Side Story", is incorporated into the title of defendants newspaper. See Complaint, ¶ 27.

In addition to the allegations of infringement based on the title of defendants newspaper, plaintiffs claim that defendants have further infringed their trademark by registering with Network Solutions, Inc., the exclusive registrar of domain names, for the Internet domain name "westsidestory.com". See id., ¶ 30. After completing registration of its domain name, defendants assigned, by written contract, "westsidestory.com" to a "host server" 1 that is owned and operated by a New Jersey corporation. See Affidavit of Andrew L. Lee at Exhibit B.

With its new domain name up and running, defendants began publishing and maintaining a website at "westsidestory.com" without plaintiffs' permission. See Complaint, ¶ 48. It is common knowledge that defendants generate significant revenue from its website by way of "click-through" advertising. See id., ¶ 36.

Plaintiffs contacted defendants regarding the alleged infringement and were met with an invitation to purchase "westsidestory.com". See Affidavit of Andrew L. Lee, ¶ 9. Defendants rejected the offer and, shortly thereafter, Congress passed the Anticybersquatting Consumer Protection Act, 15 U.S.C. Section 1125(d), which made it illegal for an individual or entity to register a trademark as a domain name with the intent to sell it for a profit to the rightful owner. See Complaint, ¶ 46. To protect against a possible lawsuit, defendants immediately added a disclaimer to their website stating, "Westside Story Not Affiliated with West Side Story the Musical." See id., ¶ 47.

Ultimately, plaintiffs filed an action seeking redress for the alleged infringements. Defendants responded with the subject Motion to Dismiss plaintiffs' claim for lack of personal jurisdiction and for failure to state a claim upon which relief can be granted.


The Supreme Court has expressly mandated that a plaintiff must establish certain

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procedural prerequisites before a federal court can exercise personal jurisdiction. See Omni Capital Intern. v. Rudolf Wolff & Co., Ltd., 484 U.S. 97, 104, 108 S.Ct. 404, 98 L.Ed.2d 415 (1987). Once the procedural prerequisites have been met, the next question, then, is whether the district court may exercise in personam jurisdiction over the particular defendant.

A district court may exercise jurisdiction over a nonresident of the state in which that court sits only to "the extent authorized by the laws of that state." Provident Nat'l Bank v. California Fed. Sav. & Loan Ass'n, 819 F.2d 434, 436 (3d Cir.1987). New Jersey's long-arm statute permits courts to exercise jurisdiction to the fullest extent under the Constitution. See Avdel Corp. v. Mecure, 58 N.J. 264, 268, 277 A.2d 207 (1971); N.J. CT. R. 4:4-4. Accordingly, this Court's analysis must focus on whether an exercise of jurisdiction comports with the requirements of the Due Process Clause of the Fourteenth Amendment.

The constitutional touchstone of this analysis is whether the "defendant purposefully established 'minimum contacts' in the forum State." Burger King Corp. v. Rudzewicz, 471 U.S. 462, 474, 105 S.Ct. 2174, 85 L.Ed.2d 528 (1985)(quoting International Shoe Co. v. Washington, 326 U.S. 310, 316, 66 S.Ct. 154, 90 L.Ed. 95 (1945)). The minimum contacts must have a basis in "some act by which the defendant purposefully avails itself of the privilege of conducting activities within the forum State, thus invoking the...

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