Database America v. Bellsouth Advertising & Pub.

• Decision Date: 28 April 1993
• Docket Number: Civ. A. No. 92-3610 (AJL).
• Citation: 825 F. Supp. 1195
• Parties: DATABASE AMERICA, INC. and Ed Burnette Consultants, Inc., Plaintiffs, v. BELLSOUTH ADVERTISING & PUBLISHING CORP., Defendant.
• Court: U.S. District Court — District of New Jersey

825 F. Supp. 1195

DATABASE AMERICA, INC. and Ed Burnette Consultants, Inc., Plaintiffs, v. BELLSOUTH ADVERTISING & PUBLISHING CORP., Defendant.

Civ. A. No. 92-3610 (AJL).

United States District Court, D. New Jersey.

April 28, 1993.

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Joseph B. Fiorenzo, Sokol, Behot & Fiorenzo, Hackensack, NJ, and Stanley L. Amberg, Robert E. Rudnick, Davis Hoxie Faithfull & Hapgood, New York City, for plaintiffs.

Roslyn S. Harrison, McCarter & English, Newark, NJ, and Anthony B. Askew, Jones & Askew, Atlanta, GA, for defendant.

OPINION

LECHNER, District Judge.

Currently before the court is the motion of defendant Bellsouth Advertising & Publishing Corp. ("BAPCO") to transfer the claims of plaintiffs Database America, Inc. ("Database") and Ed Burnette Consultants, Inc. ("Burnette") (collectively, the "Plaintiffs") to the United States District Court for the Northern District of Georgia pursuant to 28 U.S.C. §§ 1404(a) and 1406(a).¹

For the reasons that follow, the motion is granted pursuant to 28 U.S.C. § 1406(a).²

Facts

Database and Burnette are related New Jersey corporations³ with their principal and only places of business located in Montvale, New Jersey. Complaint (the "Complaint"), filed 26 Aug. 1992, ¶ 1; Goldner Decl., ¶ 2; Burnette Decl., ¶ 1. Since 1974, Burnette has been engaged in the business of preparing and selling lists. Complaint, ¶ 5; Opp. Brief at 2. These lists, which are prepared in Montvale with the aid of a computer database, contain factual information on businesses in the United States, such as names, addresses, telephone numbers and advertising data. Opp. Brief at 3. Plaintiffs concede that some of this factual information has been taken from yellow pages in directories published by BAPCO and by other, unrelated companies. Complaint, ¶ 5; Goldner Decl., ¶¶ 4, 10; Burnette Decl., ¶ 3. Neither Database nor Burnette actually publish or has published its own yellow page directories. Opp. Brief at 3; Ambrosino Decl., ¶ 5.

BAPCO is a Georgia corporation with its principal place of business in Atlanta, Georgia.⁴ Complaint, ¶ 2; Sgrosso Aff., ¶ 4. BAPCO has no office, telephone or bank account in New Jersey. Sgrosso Aff., ¶ 10; Moving Brief at 4. It does not maintain any sales, manufacturing or other type of office or employees in New Jersey. Sgrosso Aff., ¶¶ 10-11; Moving Brief at 4. BAPCO further alleges:

BAPCO does not hold itself out to the public as doing business in New Jersey and has not qualified with the Secretary of State's office in New Jersey to do business within the state. BAPCO does not have a designated agent for the receipt of service of process in New Jersey and does not pay taxes in the state. BAPCO does not send any goods into New Jersey, nor does BAPCO perform any services within the state, including the sale of advertising for any of its yellow pages directories. Finally, BAPCO does not solicit sales of advertisements for its Yellow Pages directories outside the southeastern United States.

Moving Brief at 4 (citations omitted); see also Sgrosso Aff., ¶¶ 12-14.

Since 1984, BAPCO has been in the business of "creating, compiling, publishing and distributing classified telephone directories (Yellow Pages) in nine southeastern states."⁵ Moving Brief at 2; Sgrosso Aff., ¶ 6. Those states are Georgia, Florida, Tennessee, North Carolina, South Carolina, Alabama, Louisiana, Mississippi and Kentucky. Sgrosso Aff., ¶ 7; Dowling Aff., ¶ 18. BAPCO does not create, publish or distribute any yellow pages directories for use by telephone subscribers in New Jersey.⁶ Sgrosso Aff., ¶ 9; Moving Brief at 4.

Annually, BAPCO publishes more than five hundred different telephone directories, including yellow pages.⁷ Sgrosso Aff., ¶ 8; Moving Brief at 2-3. BAPCO asserts that, since 1984, it has protected its yellow pages directories from unauthorized use by copyrighting the directories. Moving Brief at 1, 3. BAPCO also sells advertising space and business listings in the yellow page directories which it publishes. Dowling Aff., ¶ 9; Moving Brief at 5; see infra at pp. 11-17 (discussing sales of advertising).

A. The BAPCO/Burnette Relationship

It does not appear that BAPCO has ever entered into business transactions directly with Database. Moving Brief at 5; Hudson Aff., ¶ 9. As for business dealings with Burnette, BAPCO describes its relationship with Burnette as follows: "BAPCO entered into minor and infrequent business transactions with Burnette on a sporadic basis between 1984-88." Moving Brief at 4; see also Hudson Aff., ¶ 4. Specifically, BAPCO states:

BAPCO's business transactions were with Burnette as a broker of mailing lists and were primarily directed to the rental of mailing lists containing information derived from many sources, and related data processing services. BAPCO utilized the mailing lists and data processing services supplied by Burnette to assist BAPCO's solicitation of businesses which might have had an interest in placing business information within the Regional Industrial Pages directories and to assist in determining which businesses should have received copies of the Regional Industrial Pages directories.

Hudson Aff., ¶ 5.

The business transactions between BAPCO and Burnette commenced in 1984 when Burnette sent an unsolicited marketing proposal to BAPCO. See Goldner Decl., ¶ 9, Burnette Decl., ¶ 8. In 1984, Burnette entered into an agreement with BAPCO to provide data for BAPCO's distribution of the Bellsouth Advertising Industrial Directory (the "BAPCO Industrial Directory") — a business-to-business directory—in Florida and in four Georgia counties. Goldner Decl., ¶ 10; Burnette Decl., ¶ 10; Hudson Aff., ¶ 6. To carry out this project, Burnette "gathered a series of lists, merged and unduplicated, and created a single, comprehensive distribution file." Goldner Decl., ¶ 10. In conversations among Ed Burnette ("Ed Burnette") and Paul Goldner ("Goldner"), both of Burnette, and John Mendoza ("Mendoza"), Manager of Direct Marketing for BAPCO,⁸ Burnette alleges it disclosed that the data which it would use to compile its list for BAPCO would be yellow pages-based, including the use of BAPCO's own yellow pages.⁹ Goldner Decl., ¶ 10; Burnette Decl., ¶ 10; Complaint, ¶ 8.

In 1985, Burnette and BAPCO entered into a second agreement for Burnette to provide BAPCO with a distribution file for the Bellsouth Industrial Directory covering North Carolina, South Carolina, Georgia and Florida. Opp. Brief at 9; Ambrosino Decl., ¶ 7. The distribution file, which was produced at Burnette's office in New Jersey, merged multiple lists into a single distribution list for BAPCO. Ambrosino Decl., ¶ 7. This particular distribution list allegedly merged two yellow page sources: National Business Lists ("NBL") and Burnette's Master File.¹⁰ Ambrosino Decl., ¶ 7. In preparing this second list, Allen Ambrosino ("Ambrosino") and another Burnette employee visited Georgia in February 1986 to meet with BAPCO personnel. Ambrosino Decl., ¶ 8. Throughout this project, it is alleged Burnette informed BAPCO that the distribution list was completed using yellow pages-sourced databases. Ambrosino Decl., ¶ 9.

In 1986, BAPCO and Burnette entered into a third agreement for the formation of a distribution list for the BAPCO Industrial Directory. Opp. Brief at 9. According to Burnette, the 1986 project again used yellow pages-based data, including BAPCO's yellow pages, to fulfill this agreement. Opp. Brief at 9. It is alleged that, during this project, Goldner again told Mendoza that the file produced by Burnette for this project was yellow pages-based and included information from BAPCO's yellow pages.¹¹ Opp. Brief at 9. It is also alleged that, in addition to Mendoza, BAPCO employees Fred Monacelli ("Monacelli"), Bud Record ("Record") and Lee Harken were told of the yellow page-based sources for the 1985 and 1986 distribution lists. Ambrosino Decl., ¶ 9.

In 1987, BAPCO and Burnette entered into a fourth agreement to produce data for the BAPCO Industrial Directory. Opp. Brief at 9. At this time, John Ripa ("Ripa") of Burnette assumed responsibility for the BAPCO account. Ambrosino Decl., ¶ 10. Similarly, John Hudson ("Hudson") of BAPCO was placed in charge of BAPCO's Industrial Directories and became Burnette's primary contact at BAPCO. Ambrosino Decl., ¶ 10. In a number of telephone conversations and correspondence, Ripa allegedly advised Hudson that the database used to produce the necessary data was yellow page-based.¹² Opp. Brief at 9. Plaintiffs also allege Hudson spent two days in Englewood, New Jersey in March, 1987, for the purpose of "going through, in great detail, with Mr. Ripa the contents, methods and procedures used to create the computer files from which the BAPCO Industrial Directory's data was provided to BAPCO." Opp. Brief at 9-10; Goldner Decl., ¶¶ 14-15; Ripa Decl., ¶¶ 4, 8; Ambrosino Decl., ¶ 17. These conversations, moreover, are alleged to have included "a full description of the business file and Yellow Page ingredient." Opp. Brief at 10; Ripa Decl., ¶¶ 4, 8-12.

Also in 1987, Plaintiffs worked on a number of additional projects with BAPCO. For instance, Goldner and Allen Ambrosino ("Ambrosino") of Burnette worked on a project with BAPCO personnel Mendoza, Record and Monacelli in which Burnette assisted BAPCO in assembling a centralized purchasing structure for all BAPCO subsidiaries. Opp. Brief at 10. Plaintiffs allege that, during this project, it was disclosed to BAPCO personnel by Ambrosino and Goldner that the Burnette database was derived from yellow pages, including the yellow pages of BAPCO. Id. According to Plaintiffs, these discussions occurred from November 1986 through early 1988.¹³Id. In addition, on 21 January 1987, Ripa and Ambrosino met in Georgia with Hudson and Ann McElroy of BAPCO to review two projects for BAPCO's Gulf Coast and Mid-Atlantic directories. Ripa Decl., ¶ 5; Ambrosino Decl., ¶ 12. The fact of...