Berklee Coll. of Music, Inc. v. Music Indus. Educators, Inc.

• Decision Date: 04 August 2010
• Docket Number: Civil Action No. 09-cv-11627-JLT
• Citation: 733 F.Supp.2d 204
• Parties: BERKLEE COLLEGE OF MUSIC, INC., Plaintiff, v. MUSIC INDUSTRY EDUCATORS, INC., and John Terrell, Defendants.
• Court: U.S. District Court — District of Massachusetts

733 F.Supp.2d 204

BERKLEE COLLEGE OF MUSIC, INC., Plaintiff,

v.MUSIC INDUSTRY EDUCATORS, INC., and John Terrell, Defendants.

Civil Action No. 09-cv-11627-JLT.

United States District Court,

D. Massachusetts.

Aug. 4, 2010.

John T. Williams, Stern Shapiro Weissberg and Garin, LLC, Boston, MA, for Plaintiff.

Joseph L. Demeo, Neil W. Salon, Demeo & Associates PC, Boston, MA, Jonathan Streisfeld, Kopelowitz Ostrow Ferguson Weiselberg Keechl, Ft. Lauderdale, FL, for Defendants.

MEMORANDUM

TAURO, District Judge.

I. Introduction

This action arises out of allegations that Defendants' websites contain material which infringes upon copyrights and trademarks owned by Plaintiff. Plaintiff brings suit for copyright infringement, unfair competition, trademark infringement, and deceptive trade practices. Presently at issue is Defendants' Motion to Dismiss the Amended Complaint [# 13]. For the following reasons, Defendants' Motion to Dismiss the Amended Complaint is DENIED.

II. Background ¹

Plaintiff Berklee College of Music ("Berklee"), a Massachusetts corporation with its principal place of business in Massachusetts, is "one of the foremost education institutes for the study of music in the world." ² Berklee's esteemed reputation stems from its long history of innovation and the success of its graduates.³

Berklee operates a website, www. berklee. edu, which provides information to current and potential students.⁴ Berklee also offers online educational courses in the study of music through another website, www. berkleemusic. com. ⁵ The host and back-up servers for both websites (collectively,the "Berklee websites") are located in Massachusetts, ⁶ and both websites contain language expressly stating that Berklee is located in Boston, Massachusetts.⁷

The Berklee websites contain course descriptions for various music classes offered by Berklee ("Berklee Content") for which Berklee maintained a valid copyright since July 29, 2008.⁸ These websites also display "Circle Marks" and a "Shield Mark" (collectively, the "Berklee Marks") which Berklee owns and used continuously and exclusively since 2004 and 1967, respectively. ⁹ The only way to view the Berklee Content and Berklee Marks, with the exception of the "Shield Mark," was by accessing the Berklee websites. ¹⁰

Defendant Music Industry Educators, Inc. ("MIE") is a Florida corporation with its principal place of business in Florida.¹¹ MIE operates several websites ¹² that offer online music courses with partner schools. ¹³

In late June 2008,¹⁴ Plaintiff alleges that multiple full paragraph sections of the Berklee Content appeared as MIE course descriptions on the MIE websites.¹⁵ In addition, according to Plaintiff, MIE's websites began using marks that are identical, or confusingly similar to the Berklee Marks. ¹⁶

The MIE websites are continuously available to Massachusetts residents. ¹⁷ Indeed, four individuals with Massachusetts addresses submitted email inquires to MIE through its websites. But, because MIE did not have the ability to arrange for the financial aid requested by these potential students, MIE did not respond.¹⁸

The host server for the MIE websites is located in Florida and the back-up server is located in Illinois.¹⁹ MIE's only two employees other than Defendant John Terrell, the company's president, were involved solely with audio file transcription and solely with curricula development, respectively, and neither are Massachusetts residents.²⁰ MIE faculty members who teach online classes for MIE are independent contractors for the corporation who reside in various locations in the United States.²¹

John Terrell, a Florida resident, is the majority owner, corporate officer, and president of MIE.²² Terrell's Florida address is listed as MIE's principal place ofbusiness.²³ The registration for MIE's primary domain name, musicindustryeducators.com, also lists Terrell's Florida address.²⁴ Terrell is identified as the Technical and Administrative contact for that domain.²⁵

In September 2009, Plaintiff filed suit for copyright infringement, unfair competition, trademark infringement, and deceptive trade practices under M.G.L. c. 93A. Defendants then moved to dismiss this action for lack of personal jurisdiction and improper venue. Defendants also seek to dismiss the 93A claim on a theory of federal law preemption and failure to allege with particularity that the wrongful conduct primarily and substantially occurred in Massachusetts.

III. Discussion

A. Personal Jurisdiction

1. Standard of Review

On a motion to dismiss for lack of personal jurisdiction under Fed.R.Civ.P. Rule 12(b)(2), Plaintiff ultimately bears the burden of establishing jurisdiction.²⁶ "Plaintiffs may not rely on unsupported allegations in their pleadings, but are obliged to adduce evidence of specific facts" sufficient to justify the exercise of jurisdiction over the named defendants, including evidence outside the complaint.²⁷ In turn, the court will accept those "specific facts affirmatively alleged by the plaintiffs as true (whether or not disputed) and construe them in the light most congenial to the plaintiff's jurisdictional claim." ²⁸ The court will also "add to the mix facts put forward by the defendants, to the extent that they are uncontradicted." ²⁹

2. Defendant MIE

A federal court, sitting in diversity, may only exercise jurisdiction over a defendant when the requirements of both the forum's long arm statute and the Constitution are satisfied.³⁰ This court "may sidestep the statutory inquiry and proceed directly to the constitutional analysis, however, because the Supreme Judicial Court has interpreted the state's long-arm statute 'as an assertion of jurisdiction over the person to the limits allowed by the Constitution of the United States.' " ³¹

The relevant inquiry in this case, therefore, is whether a Massachusetts court may exercise personal jurisdiction over Defendants consistent with constitutional due process. Specifically, the Constitution requires that Defendants have sufficient minimum contacts with Massachusetts "such that maintenance of the suit does not offend 'traditional notions of fair play and substantial justice.' " ³² Where, as here, Plaintiff has not alleged that Defendantsengaged in a course of continuous and systematic activity in the forum state that would allow the court to exercise general jurisdiction over them, the tenability of Plaintiff's claims depends on the presence or absence of specific jurisdiction.³³

Specific jurisdiction exists only where the "cause of action arises directly out of, or relates to, the defendants' forum-based contacts." ³⁴ This, in turn, is a distinctly fact-based inquiry into whether a defendant's in-state conduct forms an " 'important, or material element of proof' in the plaintiff's case." ³⁵ The First Circuit has developed a tripartite test for the ascertainment of specific jurisdiction, requiring that a plaintiff adduce evidence demonstrating that (1) the underlying claim arises out of, or is related to, a defendant's forum-state activities, (2) a defendant's in-state contacts represent a purposeful availment of the privilege of conducting activities in the state, thereby making a defendant's involuntary presence before the state's courts foreseeable, and (3) the exercise of jurisdiction is reasonable, in light of certain Gestalt factors.³⁶

This court finds that specific jurisdiction exists as to MIE because the alleged infringing information was taken from a website located in Massachusetts, the infringing material was later transmitted back into Massachusetts, and these actions were almost certain to cause tortious injury in Massachusetts.³⁷ As in Venture Tape Corp. v. McGills Glass Warehouse, where the court found that the defendant's "alleged misuse of trademarks belonging to a Massachusetts company is enough to constitute minimum contacts for the purposes of establishing personal jurisdiction," ³⁸ MIE's alleged actions satisfy the minimum contacts test here.

a. Relatedness

To begin, it is clear that the underlying claim is related to MIE's forum-state activities. The alleged infringing material was taken from Berklee's websites in Massachusetts. Also, since "injury from trademark infringement occurs within the forum in which the trademark owner is located," ³⁹ MIE's alleged infringement caused injury in Massachusetts by harming Berklee, a Massachusetts corporation and owner of the material in question.

Furthermore, it is well-established that the relatedness prong is satisfied when, as is asserted here, the alleged wrong arises out of the publication of a website "continuously available to Massachusetts residents and causing tortious injury in Massachusetts." ⁴⁰ MIE received four emails from Massachusetts residents. MIE does not aver that it prohibited access and use by Massachusetts residents.⁴¹ Taken together,these allegations satisfy the relatedness requirement of the specific jurisdiction test.

b. Purposeful Availment

It is also clear that Defendants purposefully availed themselves of the privilege of doing business in Massachusetts. The "threshold of purposeful availment is lower" when "the case involves torts that create causes of action in a forum state (even torts caused by acts done elsewhere)" because "the defendant's purpose may be said to be the targeting of the forum state and its residents." ⁴² Here, MIE "targeted" Berklee by taking content and marks directly from its websites without permission. MIE then transmitted its own content via its websites back into Massachusetts. These allegations indicate that Defendants could foresee being haled into court in Massachusetts in an action like this one.

c. Reasonableness

In judging the reasonableness of asserting personal jurisdiction, the First Circuit considers five Gestalt factors: (1) the defendant's burden in appearing in court; (2) the forum state's interest in hearing the suit; (3) the plaintiff's convenience and interest in effective relief; (4) the judicial system's...