Northern Light Technology v. Northern Lights Club
| Decision Date | 31 March 2000 |
| Docket Number | No. CIV. A. 99-11664-DPW.,CIV. A. 99-11664-DPW. |
| Citation | 97 F.Supp.2d 96 |
| Parties | NORTHERN LIGHT TECHNOLOGY, INC., Plaintiff, v. NORTHERN LIGHTS CLUB, et al., Defendants. |
| Court | U.S. District Court — District of Massachusetts |
Bernard J. Bonn, III, Barry S. Pollack, Dechert, Price & Rhoads, Boston, for Plaintiff.
Eric C. Grimm, Grand Rapids, MI, Theodore A. Lund, Frank N. Gaeta, Gaeta, Courville & Lund, LLP, Boston, MA, Defendants.
Plaintiff Northern Light Technology Incorporated, which owns the NORTHERN LIGHT (R) trademark, alleges defendants Northern Lights Club, Jeff Burgar, and 641271 Alberta Ltd. infringed the NORTHERN LIGHT (R) trademark, cyberpirated the NORTHERN LIGHT (R) trademark, and unfairly competed with the Plaintiff through the use of a World Wide Web site at the address of www.northernlights.com.1 A number of motions are before me.
The Plaintiff moves for a preliminary injunction, to strike an affidavit, for an order holding the Defendants in contempt, and to compel documents. The Defendants move to dismiss the complaint on the basis this court lacks personal jurisdiction over the Defendants pursuant to Fed. R.Civ.P. 12(b)(2), to dismiss the complaint for failure to state a claim pursuant to Fed.R.Civ.P. 12(b)(6), to impose Fed. R.Civ.P. 11 sanctions, for reconsideration of the preliminary injunction, and to compel various discovery requests.
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. 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 unique corresponding alphanumeric address, known as a "domain name."
Hasbro v. Clue Computing, Inc., 994 F.Supp. 34, 36-37 (D.Mass.1997) (citations omitted); 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).
In order to avoid overlapping use of the same domain name, the federal government originally designated a single private company, Network Solutions, Inc. ("NSI"), to act as the exclusive registrar of domain names.2 (Suess Aff. of August 5, 1999 ("Suess Aff.") ¶ 5.) NSI basically granted domain names on a first-come, first-serve basis. (Suess Aff. ¶ 6.)
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."
Hasbro, 994 F.Supp. at 37. This case contains allegations of cybersquatting, also known as cyberpiracy. In addition, this case contains allegations of reverse hijacking, the practice of using intellectual property rights to extort a domain name from another.
One final point, although the discussion of domain names to this point has been limited to their use in identifying websites, domain name addressing also permits the addressing of email. Just as a domain name address can direct a browser user to a website, the domain name address can direct email. (Burgar Aff. of Aug. 20, 1999 ("Burgar Aff.") ¶ 9.)
Plaintiff Northern Light Technology, LLC, a Cambridge, Massachusetts based firm, provides customers with a World Wide Web search engine. (Suess Aff. of August 5, 1999 ("Suess Aff.") ¶ 2 and Ex. B.) The search engine can currently be accessed on the World Wide Web at www.northernlight.com. (Suess Aff. ¶ 2.) The Plaintiff registered northernlight.com with the NSI on September 16, 1996.3 (Suess Aff. Ex. G.) The NORTHERN LIGHT (R) search engine first began operating on the World Wide Web in August of 1997. .) At the time of the filing of this suit, the web page located at www.northernlight.com had the following layout.4 See Suess Aff. Ex. A (screen shot of www.northernlight.com).
The screen shot shows three main regions. First, running down the left side of the screen from top to bottom are
(1) the Northern Light logo, a rectangular box — slightly greater height than width — with the top three quarters of the box containing an image of a clipper ship5 and the bottom quarter containing the words "Northern Light;" (2) a button with the word "Home" on it (this button appears highlighted because the screen shot is of the home page);
(3) a button with the word "Help Center" on it;
(4) a button with the word "Accounts" on it;
(5) a button with the word "Company" on it.6
The second region runs along the top of the screen. In this region are a series of what look like folder tabs. From left to right on separate tabs are the words "Search," "Power," "Industry," "News," "WEFA," "Investext," and "Publication." These seem to be to allow users to jump to other pages associated with the words written on each tab. The "Search" tab is highlighted.
The final region occupies the majority of the screen. It is enclosed on the top and left sides by a shadowed line which makes the region appear to be the surface of a file folder. The tabs mentioned above run just above the top line to further enhance the folder metaphor. One difference from conventional folders is that the screen folder has greater height than width.
In this third region, at the top are the words "Search for." Immediately below these words is a dialog box where a user can type a word or search phrase. To the right of the dialog box are two more buttons, one that says "Search," and another that says "Help." This search dialog box is the most prominent single feature on the screen.
Beneath the dialog box and occupying the majority of this region, are two columns describing numerous special features such as Investext Search, which provides research from stock market analysts; and Custom Search Folders, which allows for results to be dynamically organized, together with notice of Northern Light's receipt of PC Magazine's Editor's Choice Award for Advanced Searching. Finally, beneath the two columns is a single centered column that suggests to users that they should make Northern Light their default search service, provides a link to connect to information about advertising, and notifies a user of Northern Light's copyright.
In addition to registering the domain name northernlight.com, the Plaintiff also trademarked the phrase "NORTHERN LIGHT." The plaintiff filed its federal registration for this trademark on September 23, 1996. (Suess Aff. Ex. F.) The trademark was first used in commerce on August 15, 1997. (Suess Aff. Ex. F.) The trademark was issued by the Patent and Trademark office on February 23, 1999. (Suess Aff. Ex. F.)
Defendant Jeff Burgar is a resident of High Prairie, Alberta, Canada. (Burgar Aff. ¶ 2.) Burgar is the president and principal shareholder of defendant 641271 Alberta, Ltd., an Alberta Corporation with its principal place of business in High Prairie, Alberta, Canada. (Burgar Aff. ¶ 3.) In addition, Burgar is the president of defendant Northern Lights Club ("Club"), an unincorporated association located in High Prairie, and the entity that officially registered the allegedly infringing domain name northernlights.com.7
In addition to 641271 Alberta, Ltd. and Club, Burgar has numerous, and often illdefined associations with other entities located in the same building in High Prairie, Alberta, Canada. Some of these entities include Internet North, South Peace News, Lakeside Leader, and Flairmail. To give some idea of the convoluted nature of the relations, Justin Lumsden, a supervisee of Burgar, primarily does work for Internet North, an internet service provider, but Lumsden is paid by South Peace News, a newspaper, and the paycheck is delivered by Mary Burgar, Defendant Burgar's wife. (Lumsden Aff. ¶ 2; Lumsden Dep. 5.) Burger manages the day-to-day activities of both Internet North and FlairMail, a vanity email service. (Lumsden Dep. 25; Burgar 2nd Supp. Aff. ¶ 2.) FlairMail is owned by Lakeside Leader, a newspaper. (Burgar Dep. 55.) Burgar believes Lakeside Leader is owned by his wife. (Burgar Dep. 55.) Burgar licenses domain names that he has registered either by himself, through 641271 Alberta, Ltd., or through clubs like the Northern Lights Club or the Bill Elliot...
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