MEMORANDUM OF DECISION AND ORDER ON THE PLAINTIFFS' MOTION TO COMPEL DISCOVERY FROM BRIGHAM WOMEN'S HOSPITAL
PETER M. LAURIAT, Justice of the Superior Court.
The plaintiffs brought this action to recover damages allegedly resulting from Nurse Christine DeMelis's care of John Makrakis ("John") on March 9, 2006. The plaintiffs allege that DeMelis improperly administered a toxic dose of the drug pancuronium bromide (sold under the brand name Pavulon), to John when he became agitated. As a result, the plaintiffs allege that John developed kernicterus.
The plaintiffs have now moved to compel certain discovery from Brigham Women's Hospital ("BWH"). Specifically, the plaintiffs request an order requiring BWH to restore all electronic backup tapes containing emails originating from the email boxes of at least thirteen employees or former employees of BWH, beginning in January 1987 and continuing through the present. The plaintiffs further seek a court order compelling BWH to employ a third-party vendor to search the restored email archives for emails containing the terms "Makrakis," "DeMelis," "pancuronium," and "Pavulon," in order to locate emails responsive to the plaintiffs' discovery requests. Lastly, the plaintiffs seek an order compelling production of all emails sent or received by DeMelis at any time.
The plaintiffs request restoration of the email accounts of the following individuals: Marianne Cummings, Sandra Harmon, Mary White, Paula Gillette, Mairead Hickey, Michael Cotugno, Tola Dawodu, William Churchill, Joanne Salines, Kelly Doherty, Kendra Ruel Woo, David Beadles, Christine Demelis, all employees of the human resources department as of March 2006, all doctors who cared for John at any time, and all of the nurses in the neonatal intensive care unit ("NICU").
In opposing the motion, BWH asserts that the restoration and search of the backup tapes would be unduly burdensome and prohibitively expensive. BWH further contends that the emails would be of little added benefit to the plaintiffs because they have already obtained substantial discovery regarding the incident at hand, including BWH's records of its investigation of the incident, John's complete medical records from his five-month admission at BWH's NICU, BWH's complete personnel file on DeMelis, a complete copy of the investigation of the incident by the Division of Licensure of the Department of Public Health, deposition testimony of at least ten BWH employees, and copies of emails from the date of the incident that were preserved on the individual computers of several BWH employees.
DISCUSSION
Parties litigating in the courts of this Commonwealth have the right to "obtain discovery regarding any matter, not privileged, which is relevant to the subject matter involved in the pending action, whether it relates to the claim or defense of the party seeking discovery or to the claim or defense of any other party. . . ." Mass. R. Civ. P. 26(b)(1). Pursuant to Rule 34(a), a party may request any other party "to produce and permit the party making the request . . . to inspect and copy, any designated documents . . ., or to inspect and copy, test, or sample any tangible things which constitute or contain matters within the scope" of discoverable evidence. When a party fails to respond adequately to a request for production of documents pursuant to Rule 34, the party seeking discovery may move for an order compelling production of the documents as provided in Rule 37(a)(2).
The scope of discoverable evidence, though broad, is not absolute. The court may limit or preclude discovery as "justice requires to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense." Mass. R. Civ. P. 26(c); see also Mass. R. Civ. P. 37(a)(2) ("If the court denies the motion [to compel discovery] in whole or in part, it may make such protective order as it would have been empowered to make on a motion made pursuant to Rule 26(c)."). The breadth of discoverable evidence is thus tempered by the court's authority to limit discovery that would impose an unreasonable burden or expense on the party responding to the discovery request.
The Federal Rules of Civil Procedure contain specific rules governing electronic discovery. Rule 26(b)(2)(B) imposes limitations on a party's obligation to produce electronically stored information:
A party need not provide discovery of electronically stored information from sources that the party identifies as not reasonably accessible because of undue burden or cost. On motion to compel discovery or for a protective order, the party from whom discovery is sought must show that the information is not reasonably accessible because of undue burden or cost. If that showing is made, the court may nonetheless order discovery from such sources if the requesting party shows good cause. . . . The court may specify conditions for the discovery.
In support of its opposition to the plaintiffs' motion, BWH submitted two affidavits from Jennings Aske, the chief information security officer for Partners Healthcare System ("Partners"), that detailed the nature of BWH's computer archives and the cost of restoring its backup tapes. Aske explained that Partners provides email accounts to approximately 55,000 individuals, including BWH's employees. The electronic information is stored on a series of computers, called servers, which are connected to create a network. The network permits users to access the information from multiple physical locations. Over time, electronic information fills the available storage space on the servers, which necessitates removal of the information from the servers by copying it onto backup tapes. Thus, to access the complete email archives of BWH employees, they would have to be restored from the backup tapes.
Once the relevant backup tapes are identified, each tape must then be restored to a server on the PHP network, which would cost approximately $550 per tape if outsourced to a third-party. Aske estimated the cost of restoring a mere sixteen months of backup tapes containing the emails of fifteen individuals to be approximately $575,000. Aske further stated that an expanded search covering all individuals identified in the plaintiffs' motion to compel, dating back to 1987, would be "exponentially more expensive and time consuming."
Based on Aske's affidavits, the court is satisfied that the plaintiffs' requested production of emails stored on backup tapes would impose an unreasonable burden and expense on BWH. The plaintiffs' request is not limited to a narrow time frame, but rather seeks restoration of all backup tapes containing emails from over thirteen past and present BWH employees over a twenty-two year period of time. Furthermore, the plaintiffs have not explained why other available sources of discovery are insufficient to secure the information they suspect may be found in emails stored on the backup tapes.
At the same time, the court recognizes that BWH's backup tapes could potentially contain relevant information, and that the plaintiffs should at least be afforded an opportunity to explore what information might be found on the tapes. Given the magnitude and cost implicated by the plaintiffs' discovery request, however, it is necessary to fashion a reasonable approach to allowing the plaintiffs an opportunity to pursue discovery without placing an unreasonable burden on BWH. The court will therefore permit the plaintiffs, at their own expense, to obtain a sampling of the emails stored on the backup tapes. If the information obtained from this sample warrants a further search of backup tapes for relevant emails, the plaintiffs may move for a further discovery order from this court, at which time the court will determine the appropriate scope of discovery and the allocation of costs between the parties.
For a discussion of factors relevant to determining an appropriate allocation of costs for restoring and searching electronically stored information from backup tapes, see Zubulake v. UBS Warburg LLC, 216 F.R.D. 280, 284-289 (S.D.N.Y. 2003); Zubulake v. UBS Warburg LLC, 217 F.R.D. 309, 322-323 (S.D.N.Y. 2003).
ORDER
For the foregoing reasons, the plaintiffs' motion to compel discovery from BWH Women's Hospital is ALLOWED , in limited part, as follows:
(1) The plaintiffs shall be entitled to obtain a sampling of relevant emails stored
on BWH's backup tapes;
(2) The plaintiffs shall determine the scope of the sampling by specifying (1) the applicable period of time, and (2) which email account or accounts must be restored;
(3) The plaintiffs shall bear the cost of restoring and searching the emails in this initial sample of backup tapes;
(4) BWH shall restore the sampling of backup tapes as requested by the plaintiffs and shall produce all emails contained therein that are responsive to the plaintiffs' discovery requests;
(5) Based on the information obtained from this sample, the plaintiffs may move for a further discovery order to compel further production of emails stored on backup tapes.
So ORDERED.
btaining convenient and effective relief; (4) the shared interest of the states in obtaining efficient resolution of disputes; and (5) the interest of the states in furthering substantive social policies."
See Consulting Eng'rs, 561 F.3d at 279 (citing
Burger King Corp v. Rudzewicz, 471 U.S. 462, 477 (1985)).
II. Defendant's Alleged Contacts with Maryland
Plaintiff describes five activities that purportedly "collectively more than satisfy the `minimum contacts' requirements of the Due Process Clause and Maryland law." Pl.'s Opp'n 5.
A. Cease-and-Desist Letters to Plaintiff
Plaintiff first argues that Defendant subjected herself to the Court's jurisdiction by sending two cease-and-desist letters to Defendant. Pl.'s Opp'n 5-7.
Plaintiff acknowledges that cease-and-desist letters alone are insufficient to invoke personal jurisdiction, citing one Sixth Circuit case and three out-of-circuit, unpublished district court decisions, but argues that Defendant's letters are factors supporting purposeful availment. See Pl.'s Opp'n 6-7. Defendant asserts that the letters are insufficient, but cites no supporting authority. See Def.'s Reply 13.
Neither the Fourth Circuit nor any federal or state court in Maryland has addressed whether sending a cease-and-desist letter is sufficient to invoke personal jurisdiction under the Maryland long-arm statute or the Fourteenth Amendment. Cf. Bond v. Messerman, 391 Md. 706, 723 (Md. 2006) (stating that "[g]enerally, telephone calls and correspondence with the plaintiff in the forum state are not sufficient contact with the forum state to satisfy due process requirements"); id. at 722 (concluding that even if defendant's dispensing of legal advice by letter and telephone satisfied section 6-103(b)(1) and (3), plaintiff nonetheless lacked minimum contacts with Maryland).
Three cases from the Middle District of North Carolina have held that merely sending a cease-and-desist letter is insufficient to establish personal jurisdiction. See United Plastics Corp. v. Terra Tech., Inc., No. 1:06cv00629, 2007 U.S. Dist. LEXIS 10812, at *11-13 (M.D.N.C. Feb. 6, 2007) (finding that the out-of-state defendant did not avail itself of the laws of North Carolina when it sent a cease-and-desist letter and subsequent correspondence in an attempt to settle a patent dispute); Wood Int'l, Inc. v. McRoy, 436 F. Supp. 2d 744, 751 (M.D.N.C. 2006) (noting that defendant did not attempt to solicit business or enter into a business relationship in North Carolina and concluding that a cease-and-desist letter alone is not sufficient to support personal jurisdiction in a declaratory judgment action involving copyrighted material); Intec USA, LLC v. Engle, No. 1:05CV468, 2005 U.S. Dist. LEXIS 38490, at *15-16 (M.D.N.C. Sept. 8, 2005) (holding that no personal jurisdiction existed in breach of contract action because defendant's letter sent to Washington state, the location of plaintiff's law firm, did not clearly threaten litigation in North Carolina, the location of plaintiff).
However, recent out-of-circuit court of appeals decisions have analyzed the issue in a variety of contexts and have uniformly held that cease-and-desist letters alone do not establish personal jurisdiction. See, e.g., Autogenomics, Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012, 1021 (Fed. Cir. 2009); Avocent Huntsville Corp. v. Aten Int'l Co., 552 F.3d 1324, 1333-34 (Fed. Cir. 2008); Kehm Oil Co. v. Texaco, Inc., 537 F.3d 290, 301 (3d Cir. 2008); Stroman Realty, Inc. v. Antt, 528 F.3d 382, 386-87 (5th Cir. 2008); Stroman Realty, Inc. v. Wercinski, 513 F.3d 476, 484-87 (5th Cir. 2008). In the patent arena, the Federal Circuit has explained that:
But cf. Yahoo! Inc. v. La Ligue Contre Le Racisme, 433 F.3d 1199, 1208-09 (9th Cir. 2006) (en banc) (suggesting that a cease-and-desist letter alone can be the basis of personal jurisdiction in certain circumstances, but that defendant's letter at issue was insufficient to invoke jurisdiction because it was not abusive or tortious or used to facilitate settlement but rather to alert plaintiff of defendant's intent to file suit in France); Bancroft Masters, Inc. v. Augusta Nat'l Inc., 223 F.3d 1082, 1089 (9th Cir. 2000) (stating that the court had personal jurisdiction when defendant sent a cease-and-desist letter to plaintiff as well as a letter to Network Solutions, Inc. ("NSI") which, under NSI procedures, would have operated to automatically prevent plaintiff from using a website had it not filed suit), overruled in part on other grounds by Yahoo!, 433 F.3d at 1208.
Principles of fair play and substantial justice afford a patentee sufficient latitude to inform others of its patent rights without subjecting itself to jurisdiction in a foreign forum. A patentee should not subject itself to personal jurisdiction in a forum solely by informing a party who happens to be located there of suspected infringement. Grounding personal jurisdiction on such contacts alone would not comport with principles of fairness.
Red Wing Shoe Co., Inc. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355, 1360-61 (Fed. Cir. 1998). Accordingly, in determining whether they may exercise personal jurisdiction, courts tend to consider cease-and-desist letters in conjunction with defendants' other activities in the forum state.
See, e.g., Campbell Pet Co. v. Miale, 542 F.3d 879, 886-87 (Fed. Cir. 2008) (concluding that the court had specific personal jurisdiction over defendant in patent litigation where defendant sent cease-and-desist letters and took steps to interfere with plaintiff's business by
attempting to have plaintiff removed from a trade show in the forum state);
Dudnikov v. Chalk Vermilion Fine Arts, 514 F.3d 1063, 1081-82 (10th Cir. 2008) (holding that the court had specific personal jurisdiction in action seeking declaratory judgment that plaintiff's prints do not infringe defendants' copyrights because defendants not only sent e-mails threatening suit but also contacted eBay with the intent that it take action against plaintiffs' business interests);
Ehrenfeld v. Mahfouz, 489 F.3d 542, 547-50 (2d Cir. 2007) (recognizing that the Second Circuit had previously held that a cease-and-desist letter alone is insufficient to invoke personal jurisdiction under New York's long-arm statute, but choosing to certify to the Court of Appeals of New York the question of whether the foreign defendant transacted business in the state by sending various letters and e-mails to plaintiff);
Breckenridge Pharm., Inc. v. Metabolite Labs., Inc., 444 F.3d 1356, 1363-67 (Fed. Cir. 2006) (clarifying that cease-and-desist letters in conjunction with a licensing agreement between defendant and a company in the forum state through which an ongoing relationship beyond royalty payments is formed, permits a court to exercise personal jurisdiction).
Consistent with the overwhelming weight of the case law, the Court concludes that cease-and-desist letters alone are not sufficient to invoke specific personal jurisdiction in an action for trademark infringement. A defendant does not "transact business" within the meaning of section 6-103(b)(1) of Maryland's long-arm statute by sending written communications to a purported infringer of its rights. Md. Code Ann., Cts. Jud. Proc. § 6-103(b). Moreover, the maintenance of a suit based solely on such letters would "offend traditional notions of fair play and substantial justice," Int'l Shoe, 326 U.S. at 316 (quotation marks omitted), and would therefore not comport with due process.
Basing personal jurisdiction solely on cease-and-desist letters may also have the unintended negative consequence of discouraging rights holders from resolving disputes expeditiously before seeking relief from the courts.
The primary purpose of the February 6, 2007 and March 25, 2008 letters was to inform Plaintiff of Defendant's rights and demand that Plaintiff cease and desist using the Bach to Rock mark. See Sarro Suppl. Decl. Ex. A; Lutzker Decl. Ex. 1. Defendant did not threaten to file suit in Maryland or otherwise avail herself of Maryland's laws. Accordingly, because the two communications are nothing more than cease-and-desist letters and are not sufficient to establish personal jurisdiction over Defendant, the Court must examine Defendants' other activities.
Although Defendant's February 6, 2007 letter does mention the possibility of a licensing/franchise agreement, see Sarro Suppl. Decl. Ex. A, there is no evidence that the parties negotiated or entered into any such agreement.
At the March 22, 2010 hearing, Plaintiff argued that the Court has personal jurisdiction over Defendant because she filed a Notice of Opposition with the PTO opposing one of Plaintiff's applications for a trademark. However, the PTO is located in Virginia and there is no connection between the filing of the Notice of Opposition and the State of Maryland.
In determining personal jurisdiction in patent actions, the Federal Circuit has held that commercialization efforts are relevant in infringement suits but not in actions seeking a declaratory judgment. Compare, e.g., Avocent Huntsville Corp. v. Aten Int'l Co., 552 F.3d 1324, 1336 (Fed. Cir. 2008) (holding that only enforcement or defense efforts related to the patent rather than the patentee's own commercialization activities are to be considered for establishing specific personal jurisdiction in a declaratory judgment against the patentee), with Synthes (U.S.A.) v. G.M. Dos Reis Jr. Ind. Com. De Equip. Medico, 563 F.3d 1285, 1298-1300 (Fed. Cir. 2009) (finding that commercialization-type contacts, such as attending a trade show, are highly relevant to personal jurisdiction in patent infringement suit); see also Autogenomics, Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012, 1020 n. 1 (Fed. Cir. 2009). The Court assumes, without deciding, that Defendant Sarro's commercialization activities — activities that relate directly to Plaintiff's claims and alleged harm — are relevant to the issue of personal jurisdiction in an action for trademark infringement.
B. E-mail Correspondence and Telephone Calls with Maryland Residents
Plaintiff argues that this Court has personal jurisdiction over Defendant because she responded to at least two e-mails from Marylanders inquiring about Bach to Rock and received telephone calls originating from Maryland. Pl.'s Opp'n at 7-8.
These e-mail and telephone communications perhaps suggest that Defendant's mark is being viewed by Marylanders and that there is confusion between the marks. However, they do not establish that Defendant (i) transacted business in Maryland, see Md. Code Ann., Cts. Jud. Proc. § 6-103(b)(1); (ii) engaged in a persistent course of conduct in Maryland, see id. § 6-103(b)(4); or (iii) derived substantial revenue from services used or consumed in Maryland, see id. The e-mail communications are isolated occurrences and the list of telephone inquires does not indicate whether Defendant solicited the calls or otherwise sought business from Marylanders. Furthermore, the communications relied upon by Plaintiff in no way contradict Defendants' averment that no Maryland resident has ever attended her music camp in New York. See Sarro Aff. ¶ 11; Sarro Suppl. Decl. ¶ 2; see also id. ¶ 3 (stating that Defendant has never sent advertising material to any Maryland resident).
Defendant maintained a handwritten document entitled "People that have contacted us!" See Pl.'s Opp'n Ex. C. The four-page document contains a list of names and telephone numbers as well as notes, such as "wanted to schedule a party in Rockville, MD" and "called for Maryland camp — found it confusing." Id.
Moreover, even assuming, arguendo, that these communications support the proposition that Defendant infringed on Plaintiff's mark within Maryland, thereby falling under the ambit of section 6-103(b)(3) of the Maryland long-arm statute, they do not, however, satisfy due process because Defendant did not purposefully avail herself of conducting activities in Maryland. In fact, the e-mail communications reveal that Defendant rebuffed potential Maryland customers rather than solicited business from them. Specifically, in response to the first e-mail inquiry cited by Plaintiff, Defendant wrote "Where are you located? Are you, by any chance in the DC/Maryland area? I'm wondering if you might have us confused with a different Bach to Rock?" See Pl.'s Opp'n Ex. A; see also Sarro Suppl. Decl. ¶ 11. Similarly, in response to the second e-mail inquiry, Defendant wrote "I think you're confusing us with the Bach to Rock organization in Maryland. We're actually up in New York. Good Luck!" See Pl.'s Opp'n Ex. B; see also Sarro Suppl. Decl. ¶ 12.
Accordingly, the two e-mail exchanges and the telephone communications cited by Plaintiff do not support personal jurisdiction over Defendant.
C. Defendant's Website
Plaintiff next seeks to establish personal jurisdiction over Defendant by virtue of Defendant's bachtorock.com website. Pl.'s Opp'n at 8-12.
In the Fourth Circuit, the mere act of "placing information on the Internet is not sufficient by itself to subject that person to personal jurisdiction in each State in which the information is accessed." Carefirst, 334 F.3d at 399 (quotation marks and alterations omitted) (quoting ALS Scan, Inc. v. Digital Serv. Consultants, Inc., 293 F.3d 707, 712 (4th Cir. 2002)). Rather, defendant "must have acted with the manifest intent of targeting Marylanders." Id. at 400 (quotation marks omitted).
The Fourth Circuit has adopted a "sliding scale" model for website-based specific jurisdiction, a model that was first articulated by the United States District Court for the Western District of Pennsylvania in Zippo Manufacturing Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119, 1124 (W.D. Pa. 1997). See Carefirst, 334 F.3d at 399; ALS Scan, 293 F.3d at 713-14. Under this sliding scale, there are passive, interactive, and semi-interactive websites:
When discussing Defendant's website in its Opposition, Plaintiff relies on an outdated, out-of-circuit case, see Pl.'s Opp'n 10 (citing Inset Sys. v. Instruction Set, 937 F. Supp. 161 (D. Conn. 1996)), that has been criticized in Maryland, Shamsuddin v. Vitamin Research Prods., 346 F. Supp. 2d 804, 808 (D. Md. 2004) (stating that Inset Systems had been "largely discredited").
At one end of the spectrum are situations where a defendant clearly does business over the Internet. If the defendant enters into contracts with residents of a foreign jurisdiction that involve the knowing and repeated transmission of computer files over the Internet, personal jurisdiction is proper. At the opposite end are situations where a defendant has simply posted information on an Internet Web site which is accessible to users in foreign jurisdictions. A passive Web site that does little more than make information available to those who are interested in it is not grounds for the exercise of personal jurisdiction. The middle ground is occupied by interactive Web sites where a user can exchange information with the host computer. In these cases, the exercise of jurisdiction is determined by examining the level of interactivity and commercial nature of the exchange of information that occurs on the Web site.
ALS Scan, 293 F.3d at 713-14 (alterations omitted) (quoting
Zippo, 952 F. Supp. at 1124). In "adopt[ing] and adapt[ing]" this model, the Fourth Circuit has held that:
a State may, consistent with due process, exercise judicial power over a person outside of the State when that person (1) directs electronic activity into the State, (2) with the manifested intent of engaging in business or other interactions within the State, and (3) that activity creates, in a person within the State, a potential cause of action cognizable in the State's courts.
Id. at 714.
This Court has recently applied Carefirst and ALS Scan in two trademark cases. In American Association of Blood Banks v. Boston Paternity, the Court dismissed a trademark infringement claim for lack of personal jurisdiction, rejecting arguments nearly identical to those asserted by Plaintiff Music Makers in the instant action. 2009 U.S. Dist. LEXIS 97817, at *10-32. Because defendant's website contained a "live-chat" feature permitting users to discuss pricing with a representative, the Blood Banks Court concluded that the website was semi-interactive. Id. at *26. However, defendant never entered into a transaction with any Maryland resident and it did not direct its website into Maryland "with the manifest intent of engaging in any transaction with the state." Id. The Court therefore concluded that the website and the application and payments that defendant had mailed into Maryland on an annual basis together did not satisfy section 6-103(b)(1) or (4) of the Maryland long-arm statute. See id. at *27-28.
Similarly, in Eagle Coffee Co., Inc. v. Eagle Coffee International, Inc., the Court also dismissed a trademark infringement case for lack of personal jurisdiction. No. L-09-2585, 2010 U.S. Dist. LEXIS 9642, at *6-14 (D. Md. Feb. 4, 2010). In Eagle Coffee, the only contacts defendant had with Maryland were (i) a website that advertised its products and (ii) sales occurring over the past two years to seven Marylanders (representing less than 0.1% of the company's business). See id. at *8-9. The Eagle Coffee Court found that the website did not suggest that defendant intended to target residents of Maryland more than residents of any other state. See id. at *11. The Court also concluded that defendant's interactions with the seven Maryland residents — which consisted of encouraging the customers to "please come again," placing a confirmatory phone call, and using a nationwide delivery service — were de minimus, isolated occurrences. See id. at *12-13.
Here, Defendant Sarro maintains a website at bachtorock.com which provides information regarding her camp, a toll-free number, and a registration form which visitors can print and mail to Defendant in New York. See Sarro Suppl. Decl. ¶¶ 6-8; see also Sarro Aff. ¶ 12. The website also had, for some period of time, a Google search box.
The parties appear to disagree as to the purpose and function of the search box. Plaintiff alleges that Defendant chose not to limit the search to her website and instead allowed it to return results from the entire internet. Plaintiff further speculates that Defendant may be compensated by the Google AdSense program. Pl.'s Opp'n 11-12. In response, Defendant avers that the search results were limited to bachtorock.com. Sarro Suppl. Decl. ¶ 18; Def.'s Reply at 11 n. 8 (stating that Plaintiff is confusing Google's keyword advertising, which does appear on Defendant's website when a search is run, with restrictions placed on search results). Defendant further avers that the search box was added through Google Custom Search Element, not Google AdSense, and that neither she nor the webmaster (i) entered into a contract with Google; (ii) completed any forms; or (iii) received money from Google. See Sarro Suppl. Decl. ¶¶ 13-21; see also id. ¶ 15 (explaining that the webmaster simply copied and pasted a few lines of free computer code).
Defendant's website is passive, or at most semi-interactive, under the Fourth Circuit's sliding scale. A visitor to bachtorock.com cannot, for example, (i) submit an application electronically; (ii) make a payment by credit card; (iii) participate in a live chat; or (iv) send an e-mail using interactive forms. Furthermore, even assuming, arguendo, that the Google search box can be considered, it neither encourages Marylanders to visit Defendant's website nor demonstrates any intent to target Maryland residents. Moreover, bachtorock.com is local in nature. It clearly indicates that the summer music camp is located in New York and does not identify Marylanders (or the residents of any other state) as potential customers. In sum, the level of interactivity of Defendant's website is low, the exchange of information is unidirectional, and the website does not suggest that Defendant intended to aim electronic activity into Maryland. Accordingly, Defendant's website does not support personal jurisdiction.
Defendant argues that the Court cannot consider the Google search box because it was added to Defendant's website in October or November 2009, more than three months after Plaintiff commenced this action. Def.'s Reply 9-10; see also Sarro Suppl. Decl. ¶ 13; id. ¶ 23 (stating that the search box was removed on February 11, 2010). If it was recently added, the search box is irrelevant because "[a] defendant's contacts with a forum state, for specific jurisdiction purposes, are measured as of the time the claim arose." Marriott PLP Corp. v. Tuschman, 904 F. Supp. 461, 467 (D. Md. 1995). However, the Court need not resolve this factual dispute because even if the search box is relevant to the issue of personal jurisdiction, it in no way demonstrates that Defendant directed electronic activity into Maryland, with the intent of engaging in business in the State. See ALS Scan, 293 F.3d at 714.
Rather, as discussed in Part II.B, supra, e-mails sent by Defendant suggest that she turned away Maryland customers. See Pl.'s Opp'n Exs. A, B; see also Sarro Suppl. Decl. ¶¶ 11, 12.
D. Advertising on Camp Marketing Websites
In addition to maintaining bachtorock.com, Defendant promoted her business through third-party websites including campchannel.com, thesummerlady.com, campdepot.com, mysummercamp.com, daycamps.net, and camppage.com. See Def.'s Resp. to Interrog. No. 4(c). Plaintiff argues that Defendant purposely availed herself of the Maryland marketplace by participating in these third-party websites and that these minimum contacts support the Court's exercise of personal jurisdiction. See Pl.'s Opp'n 12-15.
However, as with bachtorock.com, these third-party websites do not indicate that Defendant "direct[ed] electronic activity into the State . . . with the manifested intent of engaging in business or other interactions within the state." ALS Scan, 293 F.3d at 714. The fact that some of the third-party websites group camps geographically, combining New York and Maryland in the same region, does not establish that Defendant specifically targeted Marylanders to attend her out-of-state camp. The generic advertising found on these third-party websites is insufficient to invoke personal jurisdiction in Maryland.
E. The Effects Test: Intentional Infringement, Willful Diversion of Maryland Consumers, and Intent to Harm Plaintiff Within the Forum State
Finally, Plaintiff argues that the Court has personal jurisdiction over Defendant because "[t]he wilfulness with which Defendant has infringed Plaintiff's Maryland-based trademark rights, coupled with her apparent intention that these infringements be felt within the forum (by Plaintiff and also by the Maryland-based consumers who were diverted toward Plaintiff's website), more than meet the `effects' test. . . ." Pl.'s Opp'n 17.
The effects test, established in Calder v. Jones, 465 U.S. 783, 789 (1984), "does not supplant the minimum contacts analysis, but rather informs it." Consulting Eng'rs, 561 F.3d at 280. The test requires that a plaintiff establish that:
(1) the defendant committed an intentional tort; (2) the plaintiff felt the brunt of the harm in the forum, such that the forum can be said to be the focal point of the harm; and (3) the defendant expressly aimed his tortious conduct at the forum, such that the forum can be said to be the focal point of the tortious activity.
Carefirst, 334 F.3d at 398 n. 7;
see also Consulting Eng'rs, 561 F.3d at 280 (emphasizing that "although the place the plaintiff feels the alleged injury is plainly relevant to the jurisdictional inquiry, it must ultimately be accompanied by the defendant's own contacts with the state if jurisdiction over the defendant is to be upheld" (alterations omitted)).
The first two prongs of the effects test have been satisfied. Resolving in Plaintiff's favor, as it must, see Mylan Labs., Inc. v. Akzo, N.V., 2 F.3d 56, 60 (4th Cir. 1993), the factual dispute as to whether Defendant or Bach to Rock, Inc. first used the mark, the Court assumes that Defendant has committed an intentional tort of trademark infringement. The Court further assumes that Plaintiff has felt the brunt of the harm in Maryland, where it conducts its business.
Defendant asserts that she began using the Bach to Rock mark in January 2004, Sarro Aff. ¶¶ 5, 6; see also Compl. ¶ 3, three years before Plaintiff opened its music school in July 2007, Compl. ¶ 17, and notes that Plaintiff has provided no documentary evidence establishing that Bach to Rock, Inc. used the mark at least as early as 1990, Def.'s Reply at 12 (referring to East Coast Pianos instead of Bach to Rock, Inc.).
However, Plaintiff has failed to establish the third element of the effects test. As discussed in Part II.A-D, supra, Defendant has not "expressly aimed" her allegedly tortious conduct at the forum, Carefirst, 334 F.3d at 398 n. 7; she did not target Maryland residents, rejected inquires from Marylanders, and has never enrolled anyone from the State in her music camp.
Plaintiff's reliance on Cole-Tuve, Inc. v. American Machine Tools Corp., 342 F. Supp. 2d 362 (D. Md. 2004) is misplaced. See Pl.'s Opp'n 16-17. Unlike in Cole-Tuve where the defendant registered a domain name similar to plaintiff's name so as to redirect the plaintiff's internet traffic, 342 F. Supp. 2d at 368-69, Defendant Sarro has not redirected Maryland customers from Plaintiff's business. Rather, she on at least one occasion indicated to a potential customer that there was another organization with the same name located in Maryland, wishing that customer "[g]ood luck!" See Pl.'s Opp'n Ex. B; see also Sarro Suppl. Decl. ¶ 12.
Before the Fourth Circuit adopted and adapted the Zippo model, this Court in American Information Corp. v. American Infometrics, Inc., held that "the use of someone else's registered service mark as a Web site address, without any evidence of entry into the forum state, deliberate targeting of the plaintiff, or even a concentration of harmful effects in the forum state, does not constitute `effects' sufficient to create jurisdiction in the forum state." 139 F. Supp. 2d 696, 702 (2001).
Accordingly, the Court does not have personal jurisdiction over Defendant under the effects test.
CONCLUSION
Defendant's activities, considered collectively, are insufficient to establish personal jurisdiction under either the Maryland long-arm statute or the United States Constitution. Plaintiff has failed to make a prima facie showing of "a sufficient jurisdictional basis." Consulting Eng'rs, 561 F.3d at 276. Defendant simply did not avail herself of conducting activity in Maryland. Accordingly, the Court will, by separate Order, grant Defendant's Rule 12(b)(2) motion and dismiss the complaint for lack of personal jurisdiction.
ORDER
Upon consideration of Defendant Maria Sarro's Motion to Dismiss for Lack of Personal Jurisdiction (Paper No. 9), the opposition and reply thereto, as well as the arguments of counsel presented at the hearing conducted before the undersigned on March 22, 2010, it is, for the reasons stated in the accompanying Memorandum Opinion, this 14th day of July, 2010, by the United States District Court for the District of Maryland,
ORDERED, that Defendant's Motion to Dismiss for Lack of Personal Jurisdiction (Paper No. 9) is GRANTED; and it is further
ORDERED, that a JUDGMENT for costs shall be entered for Defendant; and it is further
ORDERED, that the Clerk of Court is directed to administratively CLOSE the case.