Professional Documents
Culture Documents
01-1153
________________________________
In the
Brief of Appellants
Eric C. Grimm Cindy Cohn
CYBERBRIEF, PLC ELECTRONIC F RONTIER F OUNDATION
320 South Main Street 454 Shotwell Street
P.O. Box 7341 San Francisco, California 94110
Ann Arbor, Michigan 48107-7341 415.436.9333 x 108
734.332.4900 Fax: 415.436.9993
OWNERSHIP DISCLOSURE STATEMENT
are something else entirely. For disclosure purposes, exactly what they are requires
Facts, below. The Domain Name System (“DNS”) is somewhat technical and
requires new vocabulary unfamiliar to most people who are expert in law and not
computer science. Mastery of the technical details of the DNS is essential, however,
848, 858 (E.D. Va. 2000) (“AOL”) (Ellis, J.) (quoting Network Solutions, Inc. v.
Umbro, Inc., 259 Va. 759, 769, 529 S.E.2d 80, 85 (2000) (“NSI”)). “[A] ‘domain
1
Accordingly, Defendants-Appellants (which did not name themselves as
litigants) will include this Disclosure Statement for word count purposes.
2
Under Virginia law, a Domain Name registration is not “property” subject to
an in rem garnishment proceeding, but “the product of a contract for services,”
similar but not identical to a telephone number. NSI, 259 Va. at 764-70, 529 S.E.2d
at 83-86 (quoting Dorer v. Arel, 60 F. Supp. 2d 558, 561 (E.D. Va. 1999)).
scattered across the Internet, almost all of which are operated and controlled by
entities other than NSI or any other registrar.” AOL, 106 F. Supp. 2d at 853.
Domain Names, therefore, are nothing more than data records – “bits” (ones and
zeros) – that facilitate an address-lookup function which is not centralized, but “is
distributed across the Internet on a multitude of name servers.” Id.; note 2, supra.
Ontario, Canada. He has never been a party to this litigation. Mr. Salmons,
however, remains Real Party in Interest, and respectfully discloses that Defendants
are not owned or controlled by any entity with shares traded on a public exchange.
3
“[A] domain name does not replace the IP address. Instead, [it] is an
alphanumeric means of determining the . . . IP address by way of the DNS. . . . But
this simple description incorrectly suggests that the DNS is a central database . . .
when the DNS is instead a decentralized, albeit hierarchical, process for correlating
a domain name [and the] IP address.” AOL, at 851 (emphasis added).
Federalism: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -26-
ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -28-
CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -57-
CASES
Armstrong v. DeForest,
13 F.2d 438 (2d Cir. 1926). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -42-
Bishop v. Wood,
426 U.S. 341 (1976). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -49-, -50-
Chase v. Wetzlar,
225 U.S. 79 (1912) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -43-
Dorer v. Arel,
60 F. Supp. 2d 558 (E.D. Va. 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . -i-, -50-
Fuentes v. Shevin,
407 U.S. 67 (1972) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -39-
Gillmore v. Robillard,
44 F.2d 295 (9th Cir. 1930) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -43-44-
Goss v. Lopez,
419 U.S. 565 (1975) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -49-, -50-
Hanson v. Denckla,
357 U.S. 235 (1958) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -40-
Harrison v. Prather,
404 F.2d 267 (5th Cir. 1968) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -45-46-
Kohagen v. Harwood,
185 F.2d 276 (7th Cir. 1950) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -42-
Lindsey v. Greene,
649 F.2d 425 (6th Cir. 1981) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -34-
Marbury v. Madison,
5 U.S. 137 (1803). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -35-
Nowell v. Nowell,
296 F. Supp. 640 (D. Mass. 1968),
aff’d, 417 F.2d 902 (1st Cir. 1969) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -43-
Reno v. ACLU,
521 U.S. 844 (1997). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -16-
Rush v. Savchuk,
444 U.S. 320 (1980) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim.
Shaffer v. Heitner,
433 U.S. 186 (1977) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim.
Standard Gas Power Co. of Ga. v. Standard Gas Power Co. of De.,
224 F. 990 (D. Ga. 1915) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -42-
Wilson v. Beard,
26 F.2d 860 (2d Cir. 1928) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . -43-
Supplemental Rules for Admiralty and Maritime Claims, Rule B(1) . . . . . . . . . -2-
Supplemental Rules for Admiralty and Maritime Claims, Rule C(2) . . . . . . . . . -2-
4
Plaintiff, which bears the burden of proof on this issue, failed to introduce
any evidence below of any U.S.-registered trademark whatsoever. See also note 12,
infra (Plaintiff has not proven unregistered U.S. trademark rights). Plaintiff’s
failure to meet this burden is not surprising because none of Plaintiff’s U.S. Patent
& Trademark Office applications has been allowed. See Serial No. 78026115
(“Technodome,” filed Sept. 15, 2000 – “A non-final action has been mailed. This is
a letter from the examining attorney requesting additional information and/or
making an initial refusal. However, no final determination as to the registrability of
the mark has been made.”); Serial No. 75359996 (“Destination Technodome,” filed
Sept. 18, 1997 – as of Feb. 2, 2001, “Letter of suspension mailed.”); Serial No.
75613735 (“WWW.TECHNODOME.CA,” filed Dec. 30, 1998 – as of Nov. 22, 2000,
“An office action suspending further action on the application has been mailed.”);
Serial No. 75359998 (“Destination Technodome,” filed Sept. 19, 1997 – as of Mar.
13, 2000, “An office action with a suspension inquiry has been mailed.”). Unless
and until Plaintiff actually commences operations, neither Canada nor the U.S. will
register the trademarks for which Plaintiff has applied.
5
See Merle English, City Seeks Developers for Averne Plan, NEWSDAY at A-4
(Jan. 21, 2001) (“With the $1-billion Technodome sports and recreation project
sidelined, the city is now searching nationwide for developers to build a new
community where the giant complex was to have been built in the Rockaways.”);
Downsview Park lands to be developed without Destination: Technodome (Apr.
1999), < http://www.newswire.ca/releases/April1999/13/c2106.html >; see also Jared
Mitchell, Hubris Alert: Big Time, ROB Magazine (Mar. 2000), <
whether the Complaint was defective for lack of verification, see J.A. 6-10, as is
required for in rem claims, in accordance with Rules C(2) and/or B(1) of the
The trial court also lacked jurisdiction because the Real Party in
Interest, a Canadian, was not and could not be made a party. Heathmount A.E.
Corp. v. Technodome.com, 106 F. Supp. 2d 860, 864 & n.6, 865-68 (E.D. Va.
2000). Defendants maintain and the trial court agreed that (1) “minimum contacts,”
and (2) “fair play and substantial justice,” were absent. Id. at 865-67, The trial court
therefore erred by entertaining this dispute in violation of the Due Process clauses
of the Fifth and Fourteenth Amendments. Shaffer v. Heitner, 433 U.S. 186, 207,
http://www.robmagazine.com/archive/2000ROBmarch/htmlann_bigtime.html >.
6
Failure, in an in rem proceeding, to provide proper verification deprives the
trial court of subject-matter jurisdiction to entertain the in rem claims. United States
v. $84,740.00 in U.S. Currency, 900 F.2d 1402, 1405-06 (9th Cir. 1990); Pizani v.
M/V Cotton Blossom, 669 F.2d 1084, 1090 (5th Cir.1982) ("Supplemental Rule C(2)
of the Federal Rules of Civil Procedure ... requires the filing of a verified complaint
as a prerequisite to obtaining in rem jurisdiction."); Amstar Corp. v. M/V
Alexandros T., 431 F. Supp. 328, 334 (D. Md.1977), aff'd, 664 F.2d 904 (4th
Cir.1981); see also United States v. Banco Cafetero Int'l, 608 F. Supp. 1394, 1400
n.3 (S.D.N.Y. 1985), aff'd, 797 F.2d 1154 (2d Cir.1986). The Supplemental Rules
have been held to apply in in rem cases filed under the ACPA. Caesar’s World,
Inc. v. Caesars-Palace.com, 112 F. Supp. 2d 505, 508 (E.D. Va. 2000) (“Although
the ACPA has no explicit analogous provisions . . . the general procedures for in
rem actions [the Supplemental Admiralty Rules] should apply.”).
1292(b). Shortly after its December 29, 2000 decision,7 J.A.183-201, the trial court
2001, this Court, consistent with Section 1292(b), granted the Petition of
7
The ruling rested only on 15 U.S.C. § 1125(d)(2), not on the alternate
ground Plaintiff asserted – 28 U.S.C. § 1655. The trial court declined to exercise
jurisdiction under Section 1655, in light of this Court’s decision in McQuillen v.
National Cash Register Co., 112 F.2d 877, 880 (4th Cir. 1940).
• Facially; or
• As applied;
because, under Virginia law, see note 2, supra, Domain Names are not
property, but “the product of a contract for services,” and they are not
a proper subject for in rem garnishment proceedings?
(Canadian) Plaintiff. The alleged tortfeasor, also Canadian, never has been a party
to this litigation. The named “Defendants” are something else – surrogates for a
Defendant who cannot be sued in the United States. The tort that Plaintiff alleges is
not been infringed and Plaintiff is not entitled to any remedy under Canadian law,
U.S. law, or the law of any other country9 for that matter.
present purposes. Instead, the narrow and specific issue presented here, which is
the Due Process clauses of the U.S. Constitution and to export the laws and policy
preferences of the United States extraterritorially into Canada. In this way, Plaintiff
proposes to transform U.S. Federal courts seated in Virginia into a haven for
8
See note 4, supra.
9
Plaintiff also has filed trademark applications in additional countries, the
laws of which presumably are not identical to U.S. or Canadian law. All these
(including U.S.) applications are derivative of Plaintiff’s Canadian applications.
arbitration under the Uniform Dispute Resolution Policy (“UDRP”) of the Internet
Corporation for Assigned Names and Numbers (“ICANN”). J.A.61-65, 85-98. The
J.A.120. Instead of completing the UDRP process, Plaintiff – for reasons of its
own, see J.A.101-117 – on April 28, 2000, chose to switch fora to the Eastern
District of Virginia. J.A.6-10. There is no evidence that Plaintiff has any Virginia
The Complaint was filed ex parte. J.A.27, 36. Elliott Salmons, the
alleged tortfeasor and registrant of the Domain Names, was neither served nor
named as a Defendant. The Complaint specifically alleged that Mr. Salmons could
10176-DPW (D. Mass. Mar. 27, 2001), Tab 2 (discussing ACPA and its history) –
not in spite of Virginia’s lack of jurisdiction, but precisely because of the lack of
sufficient jurisdictional contacts among the registrant, the cause of action, and the
Heitner on its head and agreed with Plaintiff that it could, through the artifice of
suing intangible surrogates in lieu of the Real Party in Interest, proceed in Virginia
precisely because the Constitutional requirements of Due Process were not satisfied.
After the District Court’s first ruling, notice of the proceeding was
finally given to Elliot Salmons in Canada. Salmons then secured U.S. counsel to
represent him pro bono publico, promptly filed dismissal papers and, based on Due
and on an as-applied basis. Under Shaffer v. Heitner, 433 U.S. at 207, 212; Rush v.
Savchuk, 444 U.S. 320, 327-33 (1980), and this Court’s decision in Pittsburgh
contacts” among the registrant, the forum, and the cause of action. Because this
(citing McQuillen v. National Cash Register Co., 112 F.2d 877, 880 (4th Cir. 1940)),
the District Court held that Plaintiff’s trademark claim – which sounds in tort and
existing claim or lein. Id. Thus, in the absence of a pre-existing claim of title
against all the world (in other words, a ‘true in rem’ claim), the trial court declined
the Caesar’s World case, 112 F. Supp. 2d 502 (see J.A. 189-91), the court concluded
– even despite McQuillen and other Due Process problems with Plaintiff’s
jurisdiction theory – that “in rem” jurisdiction over an intangible Domain Name
declined to dismiss the action in the interest of international comity, or based upon
appeal under 28 U.S.C. § 1292(b), J.A.202-03, was granted on January 10, 2001.
J.A. 212
STATEMENT OF FACTS
The facts material to the resolution of this appeal, many of which are
supra; note 12, infra) either uncontested or entitled to great deference. Of course,
the parties vigorously dispute the merits: Plaintiff’s Canadian “trademarks”10 have
10
See note 7, supra; note 12, infra. Plaintiff has sought (unsuccessfully, so
far) to register marks both in Canada and the United States. Defendants respectfully
note that the word “technodome” itself is not exclusive to Heathmount. Hasbro v.
Clue Computing, 66 F. Supp. 2d 117, 133 (D. Mass. 1999) (even for famous TM,
“trademark law does not support such a monopoly”), aff’d, 232 F.3d 1, 3 (1st Cir.
2000); see also Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah
Div. of Travel Development, 170 F.3d 449, 459 (4th Cir. 1999), cert. denied, 528
U.S. 923 (1999) (Dilution Act “famous” status inapplicable to “technodome”);
College Sav. Bank v. Florida Prepaid Educ. Fund, 527 U.S. 666, 672-73 (1999)
(TM, in Lanham Act § 1125 suit against state government, do not “qualif[y] as a
property right protected by the [14th Amendment] Due Process Clause” because TM
“bear no relationship to any right to exclude.”); Playboy Enters., Inc. v. Netscape
Comm’n Corp., 55 F. Supp. 2d 1070, 1074 (C.D. Cal. 1999) (TM cannot remove
word from language), aff’d, 202 F.3d 278 (9th Cir. 1999) (table). In fact, the word
“technodome” is presently in actual bona fide use by entities other than Plaintiff,
e.g., for exhibitions of dance music mixing competitions, and recordings thereof <
http://www.saifam.com/ technodome1.html >. Mr. Salmons’s Website also
infringes no right of Plaintiff.
nation.11 But on the issue of jurisdiction, the facts are largely undisputed.
Most importantly, the parties and the trial court all agree that Elliott
Salmons, and not Heathmount A.E. Corp., is presently the registrant of the two
J.A.194-95. In short, Heathmount’s prayer (contingent upon the merits) for a post-
11
Plaintiff also has applied for trademarks in the European Union and China,
each of which presumably has trademark laws that are not entirely identical to the
laws of either the U.S. or Canada. See note 9, supra.
12
As noted above in note 4, the trial court’s reference to “U.S. trademarks” is
in error. The record is devoid of evidence either (1) of any registration with the
United States Patent and Trademark Office or (2) of any unregistered use of any
trademark at any time whatsoever in the Commonwealth of Virginia (as opposed to
Ontario and Quebec, Canada). Nor is there evidence of any unregistered use of
any trademark in commerce any place in the United States (as opposed to intent to
use in the future). Plaintiff may or may not have future plans, but it clearly is not
using trademarks in the United States to identify any theme park that customers
presently can visit or use, or any related goods or services.
connection with the Eastern District of Virginia – other than registering the domain
names [through the Network Solutions, Inc., Website] – and he is not subject to this
alleging that personal jurisdiction cannot be obtained over [Mr.] Salmons.” J.A.31;
Heathmount, at 862.
Additional findings that (1) “minimum contacts” are lacking, id., (2)
“serious doubts” concerning “fair play and substantial justice” counsel against
adjudicating Salmons’s rights in Virginia, id. at 867 (J.A.35), and (3) “purposeful
for any other U.S. forum, id., at 864 n.6),14 are undisputed.
13
Even assuming Plaintiff has a Canadian trademark (which has not been
proven), see notes 4, 12, supra, U.S. courts repeatedly have held that mark owners
(e.g., CLUE®, EPIX®, UNITED®, BASS®, or APPLE®) are not automatically
entitled to demand possession and control of the corresponding “.com” Domain
Name. See note 10, supra (citing Hasbro, 66 F. Supp. 2d at 133); see also
Interstellar Starship Servs. v. Epix, 125 F. Supp. 2d 1269, 1280 (D. Or. 2001).
14
J.A.32, n.6 (specifically ruling out jurisdiction anyplace in the U.S.).
subsection (A)(1) beyond any manageable limit,” and concluded that any state law
Next, it recognized that “[t]o satisfy due process . . . the nature and
quality of the nonresident defendant's contacts with the forum must be significant in
relation to the specific cause of action.”15 Id. at 865 (J.A.33) (citing Burger King
Corp. v. Rudzewicz, 471 U.S. 462, 472 (1985)). This requires “a showing that the
supra), Judge Cacheris found the evidence persuasively demonstrated the absence
15
See also Shaffer, 433 U.S. at 204 (“[T]he relationship among the defendant,
the forum, and the litigation . . . [has] bec[o]me the central concern of the inquiry”
both for personal and in rem jurisdiction) (emphasis added) (cited in Burger King,
471 U.S. at 472)
16
“ The act of registration required only that Salmons visit NSI's website from
his computer . . . in Canada. In general, the entire process of registration is
relatively brief.” Id. at 866 (J.A. 35). Findings concerning the NSI Registration
Agreement itself are fully consistent with Salmons’s testimony J.A.69-70; J.A.34,
n.7 (citing AOL, 106 F. Supp. 2d at 857 n. 26).
When he registered the Domain Names on June 2, 1998, Salmons filled out the
the laws of the Province of Ontario, Canada. Id. ¶ 7. Salmons also has applied for
for Canadian residents and businesses” about “technical aspects of theater arts and .
contacts with Virginia or anywhere else in the United States..” J.A.69-70 ¶ 16. At
the time of registration, “[he] never for a moment contemplated that by registering .
proceeding.” Id. He had “no idea that NSI was located in Virginia.” Id.
The Domain Names are not “property located in the United States.”
J.A.70 ¶ 16; see also Memorandum Opinion and Order, at 34, FleetBoston Financial
Even apart from the Domain Names, Mr. Salmons has no Virginia or U.S.
35 (emphasis added) (citing AOL, 106 F. Supp. 2d at 848). “[T]he most that can be
Defendant domain names in its databases.”18 Id. (citing Network Solutions, 529
Accordingly, the relationship among the defendant, the forum, and the
17
Salmons’s testimony also shows – for forum non conveniens purposes –
that relevant documents, witnesses, and other resources are uniformly located in
Canada, not Virginia, and that litigation in Virginia would impose an extreme and
unjustifiable hardship on Salmons. Id. ¶¶ 18-22 (J.A.70-72).
18
Indeed, the registration agreement with NSI may not even signify this
minimal information. The DNS is more distributed and (other than the bi-annual
billing relationship analogous to a “magazine subscription”) much less Virginia-
specific seems to have been assumed. See note 3, supra.
notions of fair play and substantial justice” would permit the exercise of
would push the outer limits of due process beyond the breaking point.” Id.
The Internet and the Domain Name System: Courts discussing the
Domain Name System (“DNS”) have had varying degrees of difficulty accurately
explaining its operation and the functions it performs.19 Presumably, most lawyers
(on whom courts must rely) are equally uncomfortable fielding questions whose
least as mysterious in legal circles as most legal texts would be impenetrable among
software engineers. See Lawrence Lessig, CODE AND OTHER LAWS OF CYBERSPACE
6, 19-29, 53-60, 84-99 (1999) (contrasting computer “code” and legal “code,” and
(1) BIND,20 which defines and regulates the distributed operation of the DNS with a
19
The cogent and lucid explanations in Judge Ellis’s AOL opinion are among
the best written by any court to date. AOL, 106 F. Supp. 2d 848.
20
See Paul Albitz & Cricket Liu, DNS and BIND (3d ed., O’Reilly ed. 1998)
(helpful overview of how DNS works and the role of BIND); see also <
http://www.isc.org/products/BIND/ > (home of a collaborative BIND project).
Currently, the latest version of BIND is version 9.1.0 – meaning that there have
been eight MAJOR revisions of the program.
ICANN-authorized “registrars” use to manage the shared “Zone file” databases for
the “global Top Level Domains” (“gTLDs”) “.com,” “.net,” and “.org”.
ACLU, 521 U.S. 844, 849-53 (1997), defined by the “Internet Protocol”22 that
computers are permitted to have the same “IP address” simultaneously. Every IP
expressed as four Base-10 numbers between 010 and 25510, separated by “dots,” –
coordinates, then “Domain Names” are somewhat more memorable in a sense not
21
See NSI Registry C API, Version 1.1.0 (Mar. 16, 2000), <
http://www.nsiregistry.net/opensrc/sdks/registry_c_api.pdf >; Verisign GRS,
Network Solutions’ Shared Registration System (undated), <
http://www.nsiregistry.com/registrar/SRS_Overview_02.pdf >.
22
An IP network differs from “circuit-switched” networks, like old-time
telephone systems, which employed dedicated end-to-end connections. “IP,” in
contrast, is “packet switched,” which is much more efficient.
23
Bit (n.) – A binary numeral, a one or a zero. A “32-bit number” can
represent any decimal number from 0 to 4,294,967,295. In hexadecimal (Base-16)
notiation, F16 = 1510 = 11112; AC16 = 17210 = 101011002; 1516 = 2110 = 000101012.
addresses were (in a list) distributed periodically to all users, were connected to
ARPANET (an ancestor of the Internet). White Paper, at 31,741 (Describing role of
Dr. John Postel, who “undertook the maintenance of a list of host names and
Requests for Comments (RFCs).”).25 During the 1980s, however, “the task of
maintaining the name list became onerous, and the [DNS] was developed to
The DNS does not replace IP; it just (optionally) “lays on top” of IP,
making the network easier for people to navigate. Although IP is mandatory and
the DNS optional, for communications with people, the DNS (including one’s own
24
See U.S. Department of Commerce, NTIA, Management of Internet Names
and Addresses, 63 FED. REG. 31,741 (June 5, 1998) (“White Paper”); Name.Space
Inc. v. Network Solutions, 202 F.3d 573, 576-79 (2d Cir. 2000); John Postel,
Network Working Group RFC 1591: Domain System Structure and Delegation
(June 1994), < ftp://ftp.isi.edu/in-notes/rfc1591.txt >.
25
Archives of RFCs (including those chronicling the origin of the DNS) are
published on the Internet. E.g., < http://www.ietf.org/rfc.html >.
26
Realistically, nobody wants to publish a Website at an address like
http://207.41.17.112 (hardly intuitive to remember how to reach the Fourth Circuit
Website), without also securing an address like www.ca4.uscourts.gov.
right-most portion (in this case “.gov”) is called the “top-level domain” (“TLD”).28
There are presently two kinds of TLDs – country code TLDs (“ccTLDs”) like “.ca”
(Canada), “.us,” or “.tv” (Tuvalu), and generic TLDs (“gTLDs”) like “.mil” (United
States military), “.gov,” or “.com.” Moving left from the TLD, the next text string
even into 4LDs or 5LDs. AOL, at 851 n.7 (discussing term "subdomain"); Albitz &
Liu, § 2.1.2.
27
The Internet and the World Wide Web are not the same thing.
28
See Albitz & Liu, at § 2.1 (describing DNS “root” and “inverted tree”
hierarchy); Nickolai Langfeldt, Jamie Norrish, et al, DNS HOWTO, § 2 (Version
3.1 Jan. 18, 2001). “The hierarchical nature of the DNS is reflected in the structure
of the ‘domain name space,’. . . . At the very top of the hierarchy is the otherwise
nameless ‘root,’ from which extend each of the various [TLDs], from each of
which extend a multitude of [SLDs’], and so on. . . . The term farthest to the left in
a domain name identifies a host computer within the domain, and is the hardware
to which the domain name refers.” AOL, 106 F. Supp. 2d at 851 & n.7
Inc., under contract with the National Science Foundation, in 1992 assumed certain
come, all-you-can-eat basis. See White Paper, at 31742; note 10, supra.
29
This statement is not necessarily true because the implicit assumption that
there exists only one unique “root” is not true in the real world. For example,
ICANN’s proposed inclusion of a “.biz” gTLD under the legacy (NSI) Root has
generated controversy because “.biz” is already available through Nameservers that
recognize (as is any user’s prerogative) an alternate Root, operated by the Open
Root Server Consortium, as authoritative. See Manager of “.biz” Top Level
Domain Name Demands Commerce Department Rulemaking (Dec. 18, 2000), <
http://www.biztld.net/press1a.html >. Moreover, Earthlink (a dominant ISP)
recently announced that its Nameservers will point customers by default to an
alternate “New.net” Root. See New.net Expands Internet Naming With Launch of
20 New Top-Level Domain Names, < http://www.new.net/ about_us_press.tp >.
This issue of alternate Roots could become even more interesting if, for example,
the People’s Republic of China or the European Union were to seek to encourage a
substantial number of users to abandon the ICANN legacy Root. Given the
dissatisfaction of many countries with ICANN’s management of ccTLDs, this is not
only possible, but likely. See Andrew Orlowski, Country Code Chiefs, Registrars,
Mull ICANN Breakaway, THE REGISTER (Nov. 25, 2000).
30
AOL, 106 F. Supp. 2d at 858 (quoting NSI, 529 S.E.2d at 85).
31
See pp. i-ii & n.3, supra. In the Department of Commerce documents that
led to the creation of ICANN, see U.S. Dept. of Commerce, NTIA, Improvement of
Management of Internet Names and Addresses, 63 Fed. Reg. 8825, 8826 (Feb. 20,
1998) (“Green Paper”); White Paper at 31,742 & n.6, the NTIA specifically noted
Supp. 2d at 852 (“[T]here is no master directory . . . .”), 853 (“NSI operates only a
very small portion of the DNS.”), 852 (SLD and TLD nameservers “in most
instances, including . . . this case, [are] not controlled by the [same] entity”).
Defendants in this case, the “zone files”32 for these Domains are not hosted on any
NSI computers and are unlikely to be anyplace in Virginia. Technodome, 106 F.3d
at 867 (J.A.35). The Nameservers33 hosting Defendants’ “zone files,” instead, are
be directed (and to which the NSI computer, if queried, would redirect you).
that even the most-centralized function of NSI under its contract with the National
Science Foundation (namely, maintenance of the “zone file” for the NSI legacy
“root”) is not and never has been centralized in one place only. Id.
32
See AOL, 106 F. Supp. 2d at 852 & n.8 (explaining the significance of
distribution of authoritative “zones”).
33
Nameservers are essentially network-connected computers running BIND.
Langfeldt, Norrish, et al., §§ 2,3.
The DNS does not necessarily represent (nor has it ever represented)
the best or the only way34 to solve the problems that led to its creation. Mostly, it
just worked well enough that most people felt little need to switch to another
process. That situation may be changing. The Internet user population has
changed considerably since 1980. Most importantly, the majority of users no longer
reside in the United States. The Internet is evolving into a global medium in which
the United States has no justifiable claim that its perceived interests somehow
emphasized this dramatic shift. Green Paper, at 8827; White Paper, 31,742, 31,748.
Of course, aspirations are not always equaled by the concrete reality of action. For
example, certain legacy conventions of the DNS (e.g., artificial scarcity of gTLDs,
or the role of Network Solutions35 – none of which are inherent in the software that
34
Other approaches, too numerous to list here, are in development or have
been proposed to supplant the DNS with something offering higher functionality.
35
The history of NSI’s role is chronicled in the Department of Commerce
“Green Paper” and “White Paper,” that preceded the creation of ICANN. See White
Paper, at 31,742, 31,745-48; Green Paper, at 8825-33.
Department originally suggested. The United States is largely responsible for this
failure, some argue, because the U.S. government and domestic political
constituencies built too much parochial focus on the U.S. into the ICANN
registrars from around the world now have the shared capacity, using the NSI
Registry C API, see note 21, supra, to make changes to the legacy “Zone files” for
the “.com,” “.net,” and “.org” Domains. In practical terms, this means the “Zone
files” for these gTLDs are administered just as much from Germany, Australia,
(“UDRP”) for many gTLD Domain Names. See J.A.155-59. It was under the
UDRP that Plaintiff originally sought to resolve the present dispute on March 16,
2000. J.A.95. It was also the ICANN policy (then under consideration) to which
the Clinton Administration expressly referred when it went on record opposing the
36
See Albitz & Liu, § 2.2 (conventions or “traditions” are “not rules, really” as
they “can be and have been broken”).
precisely the issue at stake here. If the U.S. courts and the U.S. Congress are too
only reasonable for other governments (not all of them democratic) to begin
SUMMARY OF ARGUMENT
Canadian trademarks – does not belong in the United States. It belongs in Canada.
Canada has a well-developed body of law to address the exactly the kinds of issues
raised in this case. There is no legitimate reason for the United States to intervene
which has never been authorized to act as Elliott Salmons’s resident agent for
claim of title, no effort to seek an adjudication “against all the world” (as opposed
to adjudication against Elliott Salmons only), and nothing physically located in the
Commonwealth of Virginia (unless one contends that a paper affidavit does the
trick). See FleetBoston Financial, No. 00-10176-DPW (D. Mass. Mar. 27, 2001),
Tab B (criticizing the fiction that intangible addressing rights can be converted to
“property” and assigned “situs” arbitrarily through nothing more than the
Due Process/Shaffer: Under Shaffer v. Heitner, 433 U.S. at 207, 212; Rush
v. Savchuk, 444 U.S. 320, 327-33 (1980), and this Court’s decision in Pittsburgh
Terminal Corp. v. Mid Allegheny Corp., 831 F.2d 522 (4th Cir. 1987), the assertion
among the registrant, the forum, and the cause of action. This is the very test that
Supp. 2d 860, 862 (E.D. Va. 2000). In short, this section only purports to grant
jurisdiction under circumstances (i.e., lack of “minimum contacts,” or “fair play and
substantial justice”) in which the U.S. Constitution affirmatively forbids the exercise
unconstitutional, the requirements of Due Process certainly have not been fulfilled
in this case. Indeed, the trial court’s findings (which are entitled to deference)
To the extent that the trial court suggested that the “minimum contacts”
test applied “differently” in in rem cases, the trial court had no authority for the
Moreover, the trial court did not even explain what “contacts” among the forum, the
registrant and the dispute it believed satisfied the International Shoe / Shaffer
standard that applies equally in this in rem case as it does when personal
jurisdiction is asserted.
ordinarily a question of state law. Shortly after the passage of the ACPA, the
Virginia Supreme Court handed down a decision which held squarely that a
In the ACPA, Congress did not purport to trump the prerogative of the
Virginia Supreme Court to address this issue. Thus, Domain Names are not a
proper subject (at least in Virginia) for any kind of in rem action unless Congress
both (1) expresses a clear intention to trump the Virginia Supreme Court and pre-
empt Virginia law, and (2) has the power to do so. The question whether Congress
has the power is premature, however, because Congress has not acted.
are located in Canada. Litigation in Virginia would impose a severe logistical and
financial hardship on one or both parties. The trial court should have been much
37
See, e.g., Dickerson v. United States, 530 U.S. 428 (2000)“a constitutional
decision of this Court, may not be in effect overruled by an Act of Congress”); City
of Boerne v. Flores, 521 U.S. 507, 516-19 (1997).
circumstances of this case. Nintendo of Am., Inc. v. Aeropower Co., Ltd., 34 F.3d
246, (4th Cir. 1994); Sterling Drug, Inc. v. Bayer A.G., 14 F.3d 733, 745 (2d Cir.
1994); Vanity Fair Mills v. T. Eaton Co., 234 F.2d 633 (2d Cir. 1956)).
The trial court also applied the wrong standard for forum non
Finally, even if this court does not reverse the trial court outright, the
case should be remanded so the trial court can have the opportunity to perform the
ARGUMENT
“All proceedings, like all rights, are really against persons. Whether
they are proceedings or rights in rem depends on the number of persons affected.”
Shaffer v. Heitner, 433 U.S. at 207 n.22 (emphasis added) (quoting Tyler v. Court
of Registration, 175 Mass. 71, 76, 55 N. E. 812, 814 (Holmes, C. J.), appeal
worldview and the audacity of its arguments, it should also be evident enough –
distributed across a vast global computer network certainly are not the stuff of
Corp., No. 00-10176-DPW, at 34 (D. Mass. Mar. 27, 2001), certainly do not supply
a valid basis to adjudicate the rights of foreign persons in absentia, despite explicit
findings that no sufficient nexus among the Defendant, the forum, and the claim
points” in a computer database that may or may not be found on an NSI computer
someplace) to act as his jurisdictional surrogate in the United States. See, e.g.,
Republic of Argentina v. Weltover, Inc., 504 U.S. 607, 619-20 (1992) (foreign
and that the minimum contacts test of International Shoe “applies differently”
(translation: “does not apply here”). But Plaintiff’s approach is directly contrary to
both the reasoning and the holding of Shaffer. Briefly, “the phrase, ‘judicial
over the interests of persons in a thing,” Shaffer, 433 U.S. at 207 (emphasis added).
Therefore, for purposes of Due Process analysis under the Fifth and Fourteenth
sufficient “minimum contacts” with the person whose rights are to be adjudicated.
Shaffer, 433 U.S. at 207-08, 212 (“We therefore conclude that all assertions of state
International Shoe and its progeny.”). “All assertions” means exactly that: All
assertions.
“minimum contacts” calculated based on the tripartite relationship between (1) the
owner of the putative res (here, Elliott Salmons), (2) the cause of action, and (3) the
forum state. Shaffer, 433 U.S. at 204; see also Rush, 444 U.S. at 327-33; Pittsburgh
Terminal Corp., 831 F.2d at 526 & n.4. This tripartite relationship is exactly what
the trial court found was absent from this case: Sufficient contacts do not exist
between the registrant, the forum, and the cause of action. Heathmount, 106 F.
Supp. 2d at 865 (J.A.33-35). Therefore, it matters not what Latin label the Plaintiff
If the tripartite relationship between the registrant, the forum, and the
controversy is absent, then Shaffer v. Heitner says the same minimum contacts test
applies even if one attempts to repackage the claim as an “in rem civil action.”
Shaffer, 433 U.S. 204, 207, 212. The mere incantation of a different Latin label
does not permit one to conjure minimum contacts that clearly do not exist. Id.
relationship among the registrant, the forum, and the cause of action, to authorize
and the registrant of such a Domain Name. AOL, 106 F. Supp. 2d at 856-60;
Supp. 2d 521, 522 (E.D. Va. 2000); FleetBoston, Tab B. Nevertheless, the ACPA
purports to authorize jurisdiction over the very same disputes, based on the very
subsection in question purports to authorize an “in rem civil action” in exactly the
(A) (i) the domain name violates any right of the owner of a mark
concluded that “[S]ubpart (I) [of Section 1125(d)(2)(A)(ii)] was intended to apply
to all domain name registrants whose only contact with the United States is a
registration agreement with NSI or other domain name registrar,” J.A.35, even
though this was exactly the same “contact” that the trial court had already
acknowledged was not sufficient to comport with Due Process. 106 F. Supp. 2d at
Lucent, 95 F. Supp. 2d at 531-33. 38 Since the “minimum contacts” test and Section
as facially unconstitutional.
personal jurisdiction dismissal motion. Shaffer, 433 U.S. at 212. The appropriate
38
Further:
jurisdictional grounds. However, because the trial court’s decision rested on its
interpretation of the law and the material facts are undisputed, the trial court’s legal
archaic labels – “in personam” and “in rem” – that it failed to apply the law of the
present. While these old categories may still exist for some purposes – state long-
arm, real property, and garnishment statutes, for example – when it comes to the
Mem. Op. at 20-31, FleetBoston Financial Corp., No. 00-10176-DPW (D. Mass.
the Due Process Clauses of the U.S. Constitution always require “minimum
contacts.”40 Shaffer, 433 U.S. at 212; Pittsburgh Terminal Corp., 831 F.2d at 526.
39
Of course, there is no disagreement that the U.S. courts do recognize
“general jurisdiction” and “specific jurisdiction” as the relevant categories of
constitutional analysis when the rights to be adjudicated belong to a nonresident of
the forum. Helicopteros Nacionales de Colombia v. Hall, 466 U.S. 408, 414 & nn.8,
9 (1984). The trial court expressly recognized, however, that this is solely a
“specific jurisdiction” case and “general jurisdiction” is not at issue. Heathmount,
106 F. Supp. 2d at 865. There is also no dispute that the Shaffer standard defines
the “essential foundation” for U.S. jurisdiction in all specific jurisdiction cases.
Helocpoteros Nacionales, 466 U.S. at 414 & nn.8, 9.
40
See also Amoco Overseas Oil Co. v. Compagnie Nationale Algerienne de
Navigation, 605 F.2d 648, 654 (2nd Cir. 1979) (“Under . . . Shaffer, the test of ‘“fair
Salmons’ contacts with Virginia: the domain name registration with NSI,” see
Heathmount, at 865 (J.A. 33), Shaffer clearly supplies the controlling rule.
Rush,444 U.S. at 329-30; Shaffer, 433 U.S. at 212; Helicopteros Nacionales, 466
“purposeful availment” and “fair play and substantial justice,” neither of which is
wants to do so.41 See, e.g., Dickerson v. United States, 530 U.S. 428, 120 S. Ct.
2326, 2332-33 (2000) (Rehnquist, J., for a 7-2 Court) (addressing self-incrimination
and Due Process clauses of Fifth and Fourteenth Amendments: “But Congress may
not legislatively supersede our decisions interpreting and applying the Constitution .
play and substantial justice”’ that governs in personam jurisdiction controls in rem
jurisdiction as well.”); Lindsey v. Greene, 649 F.2d 425, 427-28 (6th Cir. 1981)
(Shaffer “erased the former distinction between in rem and in personam”).
41
Whatever Congress’s views may be on whether Salmons’s “contact” with
Virginia (a registration through NSI) satisfies Due Process, this determination is not
for Congress to make. Rather, “It is emphatically the province and duty of the
judicial department to say what the law is.” Marbury v. Madison, 5 U.S. 137, 177
(1803) (emphasis added). Here, the “judicial department” has spoken. “Minimum
contacts” do not exist between the registrant, the forum, and the cause of action.
Heathmount, 106 F. Supp. 2d at 860.
Due Process decisions of International Shoe, Shaffer, and their progeny. E.g.,
Thus, because the Due Process clauses of the Constitution limit both
the jurisdiction of courts and the powers of Congress, it is simply immaterial when
either Judge Bryan (in the Caesars World case) or Judge Cacheris (in this case)
physical location that does not exist in reality, see Rush 444 U.S. at 330
“minimum contacts” sufficient to satisfy Due Process are not present, then
and necessary party, without whose presence, this Court cannot fairly adjudicate the
cause of action, specifically requires proof of “bad faith” – making the Registrant’s
mental state a necessary element even in in rem proceedings. Harrods, Ltd. v. Sixty
Internet Domain Names, 110 F. Supp. 2d 420, 425-26 (E.D. Va. 2000); BroadBridge
Media, LLC v. HyperCD.com, 106 F. Supp. 2d 505, 511 (S.D. N.Y. 2000); see also
Greenpoint Financial Corp. v. Sperry & Hutchinson Co., Inc., ___ F. Supp. 2d ___,
2000 WL 1370835 (S.D. N.Y. Sept. 19, 2000). Since mental state is always a
necessary issue, no court can conduct an in rem civil action in absentia, omitting
analysis of “minimum contacts” is required, no matter which Latin label one may
choose to apply. Burnham v. Superior Court of Cal., 495 U.S. 604, 621 (1990)
(plurality opinion) (“The logic of Shaffer's holding . . . places all suits against
line of Supreme Court cases examining the minimum contacts required by due
process before a court can exercise in personam jurisdiction,” slip op. at 5, the trial
court is only half-right. The cases cited do apply in personal jurisdiction cases, but
the implicit assumption – that “in personam” cases and the “minimum contacts” are
somehow inapplicable here – is just simply wrong. In fact, Judge Cacheris himself,
in the Porsche case,42 directly questioned whether an NSI domain name registration
alone (or use of a domain name as a surrogate for jurisdiction over the registrant) is
sufficient to satisfy Due Process under Shaffer and International Shoe. Porsche
Cars N. Am. v. Porsch.com, 51 F. Supp. 2d 707 (E.D. Va. 1999), vacated and
remanded on other grounds, 215 F.3d 1320 (4th Cir. 2000). The only difference in
this case is that Congress has chosen with their eyes open to disregard “traditional
notions of fair play and substantial justice.” The Due Process Clauses exist for the
Shaffer did not create “first class” and “second class” tests of specific
jurisdictional contacts. Quite the contrary, Shaffer expressly held that one set of
42
Judge Brinkema, in the Lucent decision, explained that Congreess
specifically had Porsche in mind when it elected to attempt to authorize the theory
of jurisdiction that Judge Cacheris indicated was probably forbidden. Lucent
Tech., Inc. v. Lucentsucks.com, 95 F. Supp. 2d 528, 531 (E.D. Va. 2000).
with the forum” are not significant enough “in relation to the specific cause of
action” to warrant the exercise of jurisdiction. Heathmount, at 865; Rush, 444 U.S.
at 327 (In rem case) (“the inquiry must focus on “the relationship among the
imposed by due process, Congress struck a careful balance, limiting the victorious
rejected in Rush was also presumably limited to the indemnity limits of the
insurance policy in question. Id. The trial court’s approach, therefore, is squarely
forbidden by the Shaffer decision: “It is true that the potential liability of a
defendant in an in rem action is limited by the value of the property, but that
limitation does not affect the argument. The fairness of subjecting a defendant to
state-court jurisdiction does not depend on the size of the claim being litigated.”
Shaffer, at 207 n.23 (citing Fuentes v. Shevin, 407 U.S. 67, 88-90 (1972)).
The next fiction on which the District court seeks to rely is the puzzling
notion that the present case involves a so-called “true in rem claim.” Trademark
rights simply are not subject to “true in rem” adjudication. Sterling Consulting
Corp. v. The Indian Motorcycle Trademark, 1997 WL 827450 (D. Colo. Sept. 5,
1997).
commonwealth of Virginia, often can be the subject of an in rem claim, and that “it
would be unusual for the state where the property [is] located not to have
jurisdiction” over such a claim. Shaffer v. Heitner, 433 U.S. at 207. Indeed, the
owner of real property in Virginia would presumably have great difficulty arguing
that he or she did not “purposefully avail” herself of Virginia law, thereby
State may bear on the existence of jurisdiction by providing contacts among the
forum State, the defendant, and the litigation.”); see also FleetBoston.
However, all the dicta on pages 207-08 of the Shaffer case (speculating
about how “minimum contacts” might effect in rem jurisdiction in the abstract)
The Supreme Court was unlikely to have been using the ARPANET in 1977 and not
Shaffer, 433 U.S. at 199 n.17 (citing Hanson v. Denckla, 357 U.S. 235, 246 n. 12
(1958)); see also Mem. Op. 24-31, FleetBoston Financial, No. 00-10176-DPW (D.
Mass. 2001) (analyzing categories of in rem jurisdiction). This case clearly does not
involve any “true in rem” claim – a “quiet title” action operating against all the
world. Instead, the whole basis of an ACPA claim is the notion that a “domain
name” (registered by somebody other than the trademark owner) causes tortious
injury the Plaintiff by infringing the Plaintiff’s trademark. The statute only comes
into play if “the domain name violates any right of the owner of a mark registered
type of claim does not even qualify as the “first” sort of quasi in rem claim
J.A. 194-95. In short, this finding rules out any possibility that this case could be a
“true in rem” claim. Instead, this case involves an Internet Domain Name
name is not like a parcel of land and does not trigger in rem jurisdiction.
43
As noted above in note 4, the reference to “U.S. trademarks” is in error.
jurisdiction over intangibles that cannot really be said to exist physically within the
forum. Thus, in rem jurisdiction has been declined over claims involving such
44
Armstrong v. DeForest, 13 F.2d 438, 440-41 (2d Cir. 1926); Automotive
Prods. Co. v. Wolverine Bumper & Specialty Co., 15 F.2d 745, 746-47 (6th Cir.
1926); Nonmagnetic Watch Co v. Association Horlogere Suisse, 44 F. 6, 6-7 (2d
Cir. 1890) (no in rem jurisdiction over “such incorporeal and intangible property as
a patent-right”); Kleinschmidt v. Kleinschmidt Labs., 89 F. Supp. 869, 872-73 (N.D.
Ill. 1950); Bendix Aviation Corp. v. Kury, 88 F. Supp. 243, 249 (E.D.N.Y. 1950);
Rainbow Rubber Co. v. Holite Mfg. Co., 20 F. Supp. 913, 916 (D. Md. 1937);
Standard Stoker Co. v. Lower, 46 F.2d 678, 681-82 (D. Md. 1931); Standard Gas
Power Co. of Ga. v. Standard Gas Power Co. of De., 224 F. 990 (D. Ga. 1915)
(jurisdiction must “res[t] upon a real and not an imaginary or constructive basis”).
45
National Elec. Serv. Co. v. Acton, 59 F. Supp. 637, 639 (S.D.N.Y. 1945).
46
Winter v. Koon, Schwartz & Co., 132 F. 273, 274 (C.C. Or. 1904); Sterling
Consulting Corp. v. The Indian Motorcycle Trademark, 1997 WL 827450 (D. Colo.
Sept. 5, 1997).
47
Kohagen v. Harwood, 185 F.2d 276, 277-80 (7th Cir. 1950).
48
Lawrence v. Times Printing Co., 90 F. 24, 27-28 (C.C.. Wash. 1898).
Even if Network Solutions and the Virginia courts are wrong, see
Network Solutions, Inc. v. Umbro Int’l, Inc., 529 S.E.2d 80 (Va. 2000), and a
that were the subject of a probate proceeding, the U.S. Supreme Court specifically
rejected a “constructive situs” theory that the bonds could be sued in rem. Chase v.
Wetzlar, 225 U.S. 79, 87-89, 32 S. Ct. 659 (1912); see also Gilmore v. Robillard, 44
49
See Savage v. First Nat’l Bank & Trust Co., 413 F. Supp. 447, 449-51 (N.D.
Okla. 1976).
50
Nowell v. Nowell, 296 F. Supp. 640 (D. Mass. 1968), aff’d, 417 F.2d 902
st
(1 Cir. 1969).
51
See Vidal v. South Am. Securities Co., 276 F. 855, 868-74 (2d Cir. 1922)
(“An important distinction exists between shares of stock and certificates for the
shares, the certificates being mere evidence of title.”); see also Wilson v. Beard, 26
F.2d 860, 862-64 (2d Cir. 1928); Gage v. Riverside Trust Co., 156 F. 1002 (S.C. Cal.
1906); American Surety Co. v. Edwards & Bradford Lumber Co., 57 F. Supp. 18,
28-29 (D. Iowa 1958).
U.S. District Court). Intangible rights such as trademarks, patents, and copyrights
simply have no concrete, physical situs to trigger in rem jurisdiction. See notes 44-
51, supra.
under an insurance policy at issue in Rush v. Savchuk, 444 U.S. 320, 328-33 (1980):
according to the Supreme Court, “it cannot be said that the defendant engaged in
any purposeful activity related to the forum that would make the exercise of
jurisdiction fair, just, or reasonable . . . merely because [NSI] does business there.”
Id. at 329. “[I]ntangible property has no actual situs.” Id. at 330. Likewise, the
registry cannot cure this problem of lack of a concrete situs. See Mem. Op. 4-17,
33, FleetBoston Financial, No. 00-10176-DPW (D. Mass. 2001) (“[A] statute that
creates a res out of a bundle of rights, and then gives to any plaintiff with a
colorable claim the right to transfer that res to the forum of its choice, anywhere in
time, day or night, a registrant can move the Nameserver and Zone file for any
Domain Name to a server halfway around the world. The command will travel at
the speed of light, and be propagated throughout the entire DNS within 48 hours.
Try that with a piece of land. Even more instantaneously, a Domain Name
registrant can change the identities of all the hosts included within a Domain.
Nameservers. In fact, BIND essentially requires the DNS to be distributed all over
record to be any particular place is nothing but a fiction. The reality is BIND.
identified property is required. McQuillen v. National Cash Register Co., 112 F.2d
877, 880 (4th Cir. 1940) (“the proceeding must be in aid of some pre-existing claim,
existing prior to the suit in question, and not a proceeding to create for the first time
a claim to the property as the effect of the proceeding itself”); Harrison v. Prather,
Co., 125 F.2d 288, 289-90 (6th Cir. 1942); Lefcourt Realty Co. v. Sands, 113 A.2d
428 (Del. Ch. 1955), aff’d 117 A.2d 365 (Del Ch. 1955); see also Continental Trust
Co. v. Shunck Plow Co., 263 F. 873, 875-76 (5th Cir. 1920) (dismissal reversed
because lien was antecedent). In short, this is not a true in rem proceeding”
opposed to a claim sounding in tort for which the “property” might hypothetically
be levied against if the Plaintiff prevails. McQuillen, 112 F.2d at 881; Vidal v.
South Am. Securities Co., 276 F. 855, 869-73 (2d Cir. 1922).
registrant, on the day this Brief was due to be filed, the U.S. District Court for the
Likewise, such arguments have been rejected since even before the turn of the
century. See Standard Stoker Co. v. Lower, 46 F.2d 678, 681 (D. Md. 1931); see
also Hudson Nav. Co. v. Murray, 233 F. 466, 469-70 (D.N.J. 1916) (location of
Solutions, Inc., every time it receives a copy of a Complaint filed with any court in
the world, and conveniently presented to a Virginia court (or any other court, for
that matter, into which a Plaintiff has forum-shopped a dispute)), cannot transform
a Domain Name into a tangible “thing” with its actual situs in Virginia. Further,
such an affidavit certainly would not serve as an acceptable substitute for actual
jurisdiction over NSI as a party.53 If, for example, NSI were to cease cooperating
with the courts voluntarily, the “affidavit” procedure presumably would prove
considerably less effective to confer control over a Domain Name than would be
52
Such an affidavit has no effect whatsoever on the operation of the
computer software called BIND that is responsible for the actual functioning of the
DNS. See pp. 16, 18, 21-24 & nn. 20, 28-29, 31-33, 36, supra. Indeed, in reality,
such affidavits are completely immaterial to the functioning of the DNS.
53
In fact, the imaginitive “domain name declaration” strategy was invented by
Network Solutions precisely because it did not want to be named as a party to
litigation (as it had in the Skunkworks and Oscars cases in California), but NSI had
been unsuccessful in its effort to persuade courts to adjudicate domain name
disputes by way of an interpleader action. See Lockheed Martin Corp. v Network
Solutions, Inc., 985 F. Supp. 949, 953 n.2 (C.D. Cal. 1997) (Network Solutions
tried several times to use interpleader strategy, but was unsuccessful), aff’d.194
F.3d 980 (9th Cir. 1999); Network Solutions, Inc. v. Clue Computing, Inc., 946 F.
Supp. 858, 860-61 (D. Colo. 1996 ).
enumerated powers. See, e.g., United States v. Morrison, 529 U.S. 598, ___, 120 S.
Ct. 1740, 1744 (May 15, 2000); United States v. Lopez, 514 U.S. 549, 557 (1995).
All powers not specifically enumerated in the Constitution are reserved to the States
contract, and property law are substantive issues reserved to the states, to be
addressed as a matter of state law (either by state courts, under the common law, or
by state legislatures, under the Police Power). See e.g., 28 U.S.C. § 1652; Erie R.R.
v. Tompkins, 304 U.S. 64 (1938). Congress cannot exercise a general police power
or intrude on matters that are within the traditional purview of state law. Morrison;
Lopez; Jones v. United States, 120 S. Ct. 1904, 1907, 529 U.S. 848 (May 22, 2000);
cf. College Sav. Bank v. Florida Prepaid Postsecondary Educ. Expense Bd., 527
U.S. 666, 672-75 (1999) (power of Congress to prohibit States from infringing
private “property” limited); Cleveland v. United States, ___ U.S. ___, 121 S. Ct. 365
Government to take over the regulation of entire areas of traditional state concern . .
. the boundaries between the spheres of federal and state authority would blur.”
rules or understandings that stem from an independent source such as state law.”
Board of Regents v. Roth, 408 U.S. 564, 577 (1972) (emphasis added). Thus,
Federal courts typically look to state law to determine whether a “property” right
exists. Goss v. Lopez, 419 U.S. 565, 572-573 (1975); Bishop v. Wood, 426 U.S.
341, 344 (1976). Likewise, the Supreme Court, in Mullane v. Central Hanover
Trust Co., held that Fourteenth Amendment rights cannot depend on the
classification for which the standards are so elusive and confused generally and
which, being primarily for state courts to define, may and do vary from state to
state.” Mullane, 339 U.S. 306, 312 (1950); accord Shaffer, 433 U.S. at 206.
contract – not “property.” NSI, 529 S.E.2d at 86-88; accord AOL, 106 F. Supp.
2d 848 at 853 n.12; Dorer v. Arel, 60 F. Supp. 2d 558, 560-62 (E.D. Va. 1999).
an Internet domain name under Virginia law in the specific context of the in rem
though the NSI/Umbro decision post-dated the ACPA, the court did not consider its
Because the individual states and not Congress – are charged with the
task of determining whether Domain Names are property, and Congress has not
attempted to pre-empt the power of states to speak to this issue, it is only proper to
resolve this issue by looking to state law. Board of Regents v. Roth, 408 U.S. at 577;
Goss, 419 U.S. at 572-573; Bishop, 426 U.S. at 344; Mullane, 339 U.S. at 312;
54
Indeed, the exercise of jurisdiction over property in the context of enforcing
judgments is the paradigmatic illustration of traditional in rem jurisdiction. See,
e.g., Pennoyer v. Neff, 95 U.S. 714 (1878). Under Rule 69(a) of the Federal Rules
of Civil Procedure, federal courts employ the judgment enforcement processes of
the several states. See Dorer, 60 F. Supp. 2d at 559.
disputes that have so little (if anything) to do with the United States. Under U.S.
law, including precedents specific to the Lanham Act, courts of this country are
Drug, Inc. v. Bayer A.G., 14 F.3d 733, 745 (2d Cir. 1994) (citing Vanity Fair Mills
v. T. Eaton Co., 234 F.2d 633 (2d Cir. 1956)); Nintendo of Am., Inc. v. Aeropower
Co., Ltd., 34 F.3d 246, (4th Cir. 1994) (Applying Vanity Fair factors and reversing
“adequately [to] conside[r] [U.S. courts’] power to do so.” Sterling Drug, at 746;
see also Asahi Metal Indus. Co. v. Superior Ct. of Cal., 480 U.S. 102, 115 (1987)
55
The three factors that require consideration are: (1) the extent of the effect
of foreign conduct (if any) upon the United States domestic market, and whether
that effect rises to the level of a “significant” detrimental effect; (2) whether the
defendant is a United States citizen, and (3) the possibility of conflict with
trademark rights under the relevant foreign law that might trigger concerns about
about international comity. See Nintendo, 43 F.3d at 250-51.
The trial court simply did not even attempt to perform the necessary
Vanity Fair extraterritoriality analysis. See Sterling Drug Co., at 745 (remanding
because failure to perform Vanity Fair analysis is reversible error); Nintendo, at 251
(same); see also Mattel, Inc. v. MCA Records, Inc., 28 F. Supp. 2d 1120, 1158 (C.D.
Cal. 1998) (right of foreign plaintiff to sue in U.S. for violation of U.S. law – as
opposed to violation of foreign law – is strictly limited). Frankly, the trial court’s
assertion that “Plaintiff may not be able to assert the same rights in Canada, which
lacks a body of law equivalent to the ACPA and whose enforcement of its
trademark laws cannot extend into the United States,” Slip op. at 17, makes no
extraordinarily peculiar to think that United States law, as opposed to Canadian law,
those rights merely because the parties involved are not United States citizens,”
assumes the existence of U.S. P.T.O. trademark registrations that just simply do not
than the United States. In this case, it is in appropriate to project U.S. law into a
foreign country that has a demonstrated ability to handle Domain Name disputes
that trademark remedies in the United States differ in various ways from their own
56
E.g., British Columbia Automobile Assn. v. Office and Professional
Employees’ International Union, Local 378 [2001] B.C.J. No. 151 (B.C.S.C.), Tab 1;
Pro-C Ltd. v. Computer City Inc., [2000] 7 C.P.R. (4th) 193 (Ont. S.C.J.) Tab 2;
Innersense Int’l, Inc. v. Manegre, [2000] 7 C.P.R. (4th) 107 (Alta. Ct. of Q.B.), Tab
3; Airline Seat Co. v. 1396804 Ontario Inc., [2000] 8 C.P.R. (4th) 12 (Ont. S.C.J.);
Sprint Communications Co. v. Merlin International Communications Inc. [2000]
F.C.J. No. 1861, Tab 4; IMAX Corp. v. Showmax Inc., [2000], 5 C.P.R. (4th) 81
(F.C.T.D.), < http://www.fja.gc.ca/en/cf/2000/orig/html/2000fca25888 .o.en.html >;
Toronto.com v. Sinclair, [2000] 6 C.P.R. (4th) 487 (F.C.T.D.), Tab 5; Weight
Watchers International, Inc. v. Vale Printing Ltd. [2000], 7 C.P.R. (4th) 92
(F.C.T.D.), < http://www.fja.gc.ca/en/cf/2000/orig/html/ 2000fca26625.o.en.html >;
Molson Breweries v. Kuettner, [1999], 3 C.P.R. (4th) 479 (F.C.T.D.), <
http://www.fja.gc.ca/en/cf/1999/orig/html/1999fca25773.o.en. html >; Bell
ActiMedia Inc. v. Puzo (Communications Globe Tete) [1999], 2 C.P.R. (4th) 289
(F.C.T.D.), < http://www.fja.gc.ca/en/cf/1999/orig/html/ 1999fca24841.o.en.html >;
ITV Technologies, Inc. v. WIC Television Ltd. [1999] 2 C.P.R. (4th) 1 (F.C.T.D.),
< http://www.fja.gc.ca/en/cf/1999/orig/html/ 1999fca25071.o.en.html >; ITV
Technologies, Inc. v. WIC Television Ltd. [1997], 77 C.P.R. (3d) 486 (F.C.T.D.), <
http://www.fja.gc.ca/en/cf/1997/orig/html/ 1997fca21666.o.en.html >; PEINET Inc.
v. O'Brien [1995], 61 C.P.R. (3d) 334 (P.E.I.S.C.).
countries (or Canada, for that matter), were to begin using assertions of in rem
jurisdiction (based on nothing more than the convenient filing of affidavits in their
own courts) to apply their preferred rules extraterritorially to disputes among U.S.-
resident plaintiffs and defendants, who may or may not have registered trademarks
entities, via the Internet, is not a matter of idle speculation. For example, aspects of
this issue are already being adjudicated in Yahoo!, Inc. v. La Ligue Contre Le
Racisme et L’Antisemitisme, C.A. No. 00-CV-21275 (N.D. Cal. filed Dec. 21, 2000).
with trademark law. Other countries, such as Myanmar or Singapore may also be
of foreign jurisdiction and foreign law into matters that are properly viewed as a
than the interjection of U.S. courts into disputes among Canadians over Canadian
trademarks, in the parochial view that the U.S. Congress and/or the U.S. courts
Canada (and none are or ever will be in Virginia), there exists no evident or
persuasive reason to treat trademark law differently from any other branch of tort
contexts in which other kinds of foreign tort plaintiffs clearly would be prohibited
involving accused foreign tortfeasors. See, e.g., Helicopteros Nacionales, 466 U.S.
408 (1984) (personal injury claims do not belong in U.S. courts); Piper Aircraft Co.
v. Reyno, 454 U.S. 235, 255 (1981) ( the “presumption in favor of the plaintiff's
choice of forum . . . applies with less force when the plaintiff or real parties in
and international waters exclusively on our terms, governed by our laws, and
resolved in our courts.” M/S Bremen v. Zapata Offshore Co., 407 U.S. 1, 9 (1972).
Both the Supreme Court and this Circuit have had a long history of rejecting such
“parochial” notions. Allen v. Lloyd’s of London, 94 F.3d 923, 928 (4th Cir. 1996).
then U.S. courts should be circumspect about exporting U.S. policy preferences
extraterritorially simply because the laws of foreign countries are not completely
harmonious relations among independent sovereigns. The United States, more than
any other country, has reason to benefit by encouraging cooperation among all the
other nations that are being drawn together by the Internet. The United States also
has more than any other country to fear if other nations (not all of them democratic)
begin applying their laws extraterritorially on the pretext that they are merely
In light of this reality, the trial court misapplied the relevant principles
of International Comity and of forum non conveniens. Not only did the trial court
fail to address the Vanity Fair factors and to assign appropriate weight to the
prerogatives of the Canadian sovereign, but the trial court also applied the wrong
legal standards in its forum non conveniens analysis. Forum on Conveniens is not
For the foregoing reasons, Defendants respectfully pray that this Court
reverse the decision below and remand with instructions to dismiss the action for
lack of jurisdiction.
Respectfully submitted,
TECHNODOME.COM and
DESTINATIONTECHNODOME.COM,
By counsel,