


		Memorandum in Support of EFF Defendants' Motion for Reconsideration And/or for Certification Under 28 U.S.C. § 1292(b); in Ford Motor v. GreatDomains.com, et al. (Apr. 23, 2001) IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF MICHIGAN SOUTHERN DIVISION FORD MOTOR COMPANY, et al., Plaintiffs v. Civil Action No. 00-71544 GREAT DOMAINS.COM, INC., et al., Hon. Robert H. Cleland United States District Judge Defendants ____________________________________ MEMORANDUM IN SUPPORT OF EFF DEFENDANTS' MOTION FOR RECONSIDERATION AND/OR FOR CERTIFICATION UNDER 28 U.S.C. § 1292(b) Defendants Robert Emmert, Paul Brown, Alfonso Fiero, John Hall, Gapmount, Ltd., Wallace Rawson, RADTECH, and Tom Cooper (collectively, "EFF Defendants") respectfully move for reconsideration of this Court's March 30, 2001 Opinion and Order on each of the factual and legal points set forth in their Motion or, alternatively, for an order under 28 U.S.C. § 1292(b), certifying four narrow issues of law for interlocutory appellate review. QUESTIONS PRESENTED 1. Has FORD Made the required threshold evidentiary showing to justify the imposition of burdensome jurisdictional discovery on any EFF Defendants? MOST RELEVANT AUTHORITIES: Central States, Southeast & Southwest Areas Pension Fund v. Reimer Express World Corp., 230 F.3d 934, 946-47 (7^th Cir. 2000); Theunissen v. Matthews, 935 F.2d 1454, 1465 (6^th Cir. 1991); Chrysler Corp v. Fedders Corp., 643 F.2d 1229, 1239-40 (6^th Cir. 1981); Ellis v. Fortune Seas, Ltd., 175 F.R.D. 308, 312 (S.D. Ind. 1997) ("[A] plaintiff is not always entitled to discovery to respond to a motion to dismiss for lack of personal jurisdiction.") (emphasis added); Poe v. Babcock Int'l, plc, 662 F. Supp. 4, 7 (M.D. Pa. 1985) ("It would be inappropriate for this court to allow plaintiff to conduct a fishing expedition in order to construct a basis for jurisdiction."). 2. For purposes of jurisdiction, does trademark "injury" occur where the Plaintiff is headquartered, or (as courts addressing this exact issue have held) the place where allegedly "confused" customers are located and infringing sales (if any) are made (in this case all over the world -- with no special concentration in Michigan)? MOST RELEVANT AUTHORITIES: Land-O-Nod Co. v. Bassett Furniture Indus., 708 F.2d 1338, 1340-43 (8th Cir. 1983); Keds Corp. v. Renee Int'l Trading Corp., 888 F.2d 215, 218 (1^st Cir. 1989); Tefal, S.A. v. Products Int'l Co., 529 F.2d 495, 496 n. 1 (3^rd Cir.1976); Vanity Fair Mills v. T. Eaton Co., 234 F.2d 633, 639 (2d Cir.) ("[I]n cases of trade-mark infringement and unfair competition, the wrong takes place . . . where the passing off occurs, i.e., where the deceived customer buys the defendant's product in the belief that he is buying the plaintiff's."), cert. denied,* 352 U.S. 871 (1956). 3. With respect to EFF Defendants located abroad, has the Court improperly applied or failed to apply principles of international comity and/or forum non conveniens? MOST RELEVANT AUTHORITIES: Nintendo of Am., Inc. v. Aeropower Co., Ltd., 34 F.3d 246, 250-51 (4^th Cir. 1994) (comity); Sterling Drug, Inc. v. Bayer A.G., 14 F.3d 733, 745 (2d Cir. 1994) (same); Vanity Fair Mills v. T. Eaton Co., 234 F.2d 633, 638, 642-44 (2d Cir. 1956) (same); id. at 645-47 (forum non convenins); Piper Aircraft Co. v. Reyno, 454 U.S. 235, 241 & n.6, 257-61 (1981) (same); see also Asahi Metal Indus. Co. v. Superior Ct. of Cal., 480 U.S. 102, 109 (1987); Core-Vent Corp. v. Nobel Indus., A.B., 11 F.3d 1482, 1490 (9^th Cir. 1993). 4. Have the Polaroid/Sleekcraft "likelihood of [customer] confusion" factors been misapplied in this Domain Name dispute, or has the Court failed to apply them? MOST RELEVANT AUTHORITIES: Data Concepts, Inc. v. Digital Consulting, Inc., 150 F.3d 620, 627 (6th Cir. 1998) (reversing summary judgment based on Polaroid/Sleekcraft factors: "The magistrate judge's analysis of several of the . . . factors was clearly inadequate."); Holiday Inns, Inc. v. 800 Reservation, Inc., 86 F.3d 619, 623 (6th Cir. 1996); AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9^th Cir. 1979); Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2nd Cir. 1961). 5. Has this Court misapplied the Calder v. Jones effects test, and violated the Due Process rights of no fewer than two Defendants, by treating mere spelling as an automatic surrogate for the requisite proof of a culpable mental state? MOST RELEVANT AUTHORITIES: Reynolds v. International Amateur Athl. Ass'n, 23 F.3d 1110 (6^th Cir. 1994); IMO Indus. v. Kiekert, AG, 154 F.3d 254, 262-65 (3^rd Cir. 1998); ESAB Group, Inc. v. Centricut, Inc., 126 F.3d 617, 625-26 (4^th Cir. 1997); Core-Vent Corp. v. Nobel Indus., A.B., 11 F.3d 1482, 1490 (9^th Cir. 1993); Land-O-Nod Co., 708 F.2d at 1340-43; Vanity Fair Mills, 234 F.2d at 639. INTRODUCTION "Lexical context"-- a focus on spelling to the exclusion of all other Polaroid / Sleekcraft "likelihood of confusion" factors -- simply cannot substitute for, or circumvent, the customary trademark analysis of all surrounding facts and circumstances. Most importantly, spelling alone is not a proper methodology to determine the mental state of a Defendant for purposes of jurisdiction and the Calder v. Jones effects test. The notion that certain spellings of Domain Names automatically signify tortious (not to mention geographically-focused!) "intent" is simply too much of a stretch to be taken seriously. Other defects in this Court's March 30, 2001 Opinion include the evident arbitrariness of assigning the situs (if any) of alleged "injury" differently in "Domain Name" cases than in other trademark cases, [1] disregarding whether "injury" (like plaintiff's customer base) is geographically dispersed, ² and departing dramatically from the rule that trademarks do not automatically trigger "home court" jurisdiction. ³ The facial arbitrariness and subjectivity of "lexical context"-- which substitutes mere spelling for proof of actual harm and intent to cause harm in a particular location ⁴ -- becomes even more evident upon examining the facts (assessment of which the Court has bypassed altogether)concerning two Domain Names that this Court has singled out for special treatment. ⁵ These two Domain Names -- and their registrants -- have been singled out without any real effort to explain the case-specific application of various "factors" the Court has listed. All the Court has done is to enumerate a multitude of "factors" (without any legal explanation why these "factors," and not some other set of factors, should apply), and then to state a result -- without explanation or analysis why this result (as opposed to dozens of equally plausible -- albeit equally subjective -- "lexical context" groupings of the same list of nine Domain Names) necessarily flows from or "connects up" logically with the listed but un-analyzed "factors." We therefore respectfully invite this Court to revisit its prior Opinion and to identify (if possible) any generalizable, non-arbitrary principles that can actually serve to guide other courts in the resolution of disputes consistently from court to court and case to case. ⁶ The breathtakingly subjective alternative hardly represents an ideal way to provide useful guidance for participants in the legal process, or to enable lawyers to give their clients useful advice on how to avoid infringement suits (or discovery) in far-away jurisdictions. Finally, in order to justify imposing the burden and expense of a jurisdictional discovery fishing expedition, FORD necessarily bears at least an initial defendant-specific evidentiary burden ⁷ of demonstrating that there is a sufficient reason to conduct discovery, such that jurisdictional discovery would not waste everybody's time and resources. Given the complete lack of any defendant-specific pre-filing factual investigation or admissible post-filing evidentiary showing by FORD, FORD has not met this initial burden. STATEMENT OF FACTS FORD cannot have it both ways. FORD cannot contend that Volvo Trademark Holding, AB -- a Swedish corporation based in Sweden (not all of which is owned by FORD), ⁸ or Jaguar Cars, Ltd., ⁹ or any other subsidiaries ¹⁰ are separate entities for a variety of purposes (including tax, product liability, and other purposes) but disregard those corporate formalities when FORD wants to sue foreign defendants in Detroit. "Constitutional due process requires that personal jurisdiction cannot be premised on corporate affiliation or stock ownership alone where corporate formalities are substantially observed." Central States, 230 F.3d at 943. As a factual matter, the Volvo, Aston-Martin, Jaguar, and other trademarks are not "located" (if that word can even be used with respect to trademarks) in Dearborn. Facts Relating to Alfonso Fiero: Interestingly, a search for the word "Lincoln" in the USPTO database turns up over 350 "hits" -- only a fraction of which belong to FORD Motor Company. See Tab 1. More to the point, considerably more than a year ago (and quite some time before this lawsuit was filed), Alfonso Fiero filed an application with the United States Patent and Trademark Office for a trademark on "Lincoln Trucks" -- Serial No. 75885324 (Jan. 7, 2000). See Tab 1. The timing of this filing is significant because only subsequently does FORD appear to have started the groundwork (including intent-to-use applications) for the possible launch of a hypothetical future pickup truck. ¹¹ At present (and also at the time of Fiero's trademark filing), trucks have never been sold under the "Lincoln" brand name. Moreover, from a "lexical context" point of view at least as reasonable and non-arbitrary as this Court's, < Lincolntrucks.com > obviously refers to Lincoln, Nebraska, ¹² and is most appropriate for a Nebraska-oriented Website involving large commercial vehicles, which Website would not likely have anything to do with FORD. It bears mentioning that the only inquiries that Alfonso Fiero ever received about this Domain Name have been exclusively from Lincoln, Nebraska. ¹³ Other examples the Court might want to consider include: (1) Lincoln Auto of Denver, < www.ladenver.com >, a dealer in used vehicles; (2) Lincoln Sunoco Gas Station, < www.lincolnauto.com > , a filling station for automobiles; (3) Lincoln Auto Service, < www.aaalincolnauto.com >, a used car dealership, ¹⁴ and (4) Lincoln Auto Auction, < www.lincolnautoauction.com >, an auction service located in Lincoln, Nebraska. FORD certainly cannot claim that FORD alone -- as opposed (for example) to a Lincoln, Nebraska, Freightliner dealership, see < www.omahatruck.com >, or a critic of FORD Motor Company ¹⁵ -- has an exclusive "interest in" this address. FORD obviously is not entitled to be the only speaker ever to use < LincolnTrucks.com >, even if someone else does so first. ¹⁶ In light of the above, what concrete and specific rationale is there for treating (as the Court has done) "mercurysource.com" differently from "lincolntrucks.com?" Is it possible to explain a "lexical context" analysis objectively -- based on a consistent set of rules -- that rationally and predictably leads to the Court's selected result and not some other result if different decision-makers consider the same set of facts? What rationale is there for concluding that the spelling of < lincolntrucks.com > permits this Court to disregard the above facts in their entirety and to take jurisdiction without regard to the actual mental state of the registrant? ¹⁷ Facts Relating to RADTECH: As Wally Rawson (the President of RADTECH) states in Paragraph 4 of his affidavit, he has a clear and legitimate interest in the sale of compatible replacement parts for Ford cars and trucks -- either official Ford parts (which he sells) or truthfully advertised non-patented substitute parts and accessories: 4. I own a business called RADTECH, which sells original equipment manufacturer (OEM) and aftermarket parts for Ford automobiles and trucks. Selling automobile parts has been my family's business for three generations. Decl. of Wallace Rawson, at ¶ 4 (Oct. 29, 2000) (emphasis added). Similar to the case of Tom Cooper, Mr. Rawson considered developing a legitimate Website for Illinois-resident and other customers of his Illinois-based business. But the intervening litigation has prevented him from moving forward with any of his Internet-related ideas because of the uncertainty and alarm that FORD's allegations have unnecessarily caused him. This Court has even recognized that Mr. Rawson's parts business requires legal protection. See 2001 WL 348986, at 5 n.5. As recognized in Weber-Stephen Co. v. Armitage Hardware Co., Case No. D2000-0187 (WIPO May 11, 2000), dealers like Mr. Rawson have a legitimate interest in using domain names such as this one if they have the initiative to be first to register: Respondent's own web page at WEBERGRILLS.COM repeatedly reproduces Complainant's registered WEBER trademark. Respondent's web page makes an effort to show Respondent is associated with Complainant; not just by using Complainant's exact trademarks, but also by stating that Respondent is Complainant's distributor. . . . Nevertheless, Respondent has presented competent proof that it has a "right or legitimate interest in respect of the domain name." . . . This Panel is satisfied that Respondent has presented sufficient evidence to prove that it has used the domain name in connection with the bona fide offering of Complainant's goods or services. . . . See also Weber-Stephen Prods. Co. v. Armitage Hardware and Bldg. Supply, Inc., 2000 WL 562470 (N.D. Ill. 2000) (companion case). In short, distributors, sellers of compatible replacement parts, sellers of used vehicles, and the like all have a legitimate interest ¹⁸ in using a Domain Name such as "4FORDPARTS" or "USEDFORDMUSTANGS" even over the strenuous objection of a gigantic multinational conglomerate like Ford. The alternative -- granting Ford an arbitrary veto over the truthful advertising practices of small businessmen concentrates far too much power in the hands of entities like FORD. ARGUMENT We certainly welcome the Court's concern that arbitrariness is to be avoided: "[t]o indulge in such ad hoc determinations creates confusion when there should be certainty . . . ." Slip op. at 19 (citing IMO Indus. v. Kiekert, AG, 155 F.3d at 265 n.9). Nevertheless, there exists good and persuasive reason to believe that the interjection of arbitrariness and unpredictability into the dispute resolution process is exactly what this Court has managed to accomplish. Not only is the decision to impose jurisdictional discovery problematic for both practical and policy reasons, but the Court's decision to treat Alfonso Fiero and RADTECH differently from other Defendants has not been explained in any satisfactory way. I. The Court's Effort to Distinguish IMO v. Kiekert and Reynolds v. IAAF Is Mistaken Because FORD's Customers Are Not Concentrated In Michigan. The Court correctly recognizes that "Calder* did not set forth a per se rule that the allegation of an intentional business tort alone is sufficient to confer personal jurisdiction . . . where the plaintiff resides," ¹⁹ slip op. at 15-16 (quoting IMO, 155 F.3d at 262), and an "automatic home-court advantage for plaintiffs" would represent "a result not intended by Calder. Id. However, the Court goes on to attempt to distinguish the IMO decision and the Reynolds v. IAAF decision on two grounds: (1) that "[a]lthough the [Sixth Circuit] noted that Reynolds was 'an international athlete whose professional reputation is not centered in Ohio,' ²⁰ it listed numerous other factors indicating that Ohio was not the focal point of the injury," id. at 20, and (2) because IMO contains a footnote that questions whether the location of injuries to a corporation should be determined differently than the location of the "brunt" of injury to Shirley Jones in Calder v. Jones. Id. at 19-20 (citing IMO at 265 n.9). The footnote in IMO on which the Court places such reliance expressly is not precedent even in the Third Circuit: Dollar Savings Bank v. First Security Bank of Utah, 746 F.2d 208, 214 (3d Cir. 1984) . . . dealt with different factual circumstances and was not concerned with whether a plaintiff "felt" the effects of a defendant's tortious conduct for Calder analysis purposes. . . . [B]ecause our decision is based on other grounds, we need not decide how our reasoning in Dollar would apply in the context of a Calder analysis. IMO, 155 F.3d at 265 n.9 (emphasis added). Moreover, the IMO case was not a trademark case, and did not discuss the distinction between (a) trademark infringement (which is not an "intentional tort" for which liability is conditioned upon a finding of intent) and (b) intentional torts like tortious interference with business relations (which did not trigger jurisdiciton in IMO) or defamation of a public figure (the tort alleged in Calder). Not surprisingly, the crucial distinction in this case is not the Corporation / natural person distinction in IMO Footnote 9. Rather, the critical distinction is between trademark cases and other kinds of "business torts." In trademark cases, the "injury" does not occur at the location of a corporate Plaintiff's headquarters. See note 1, supra. Instead, "targeting" in a trademark case can only occur (and the Calder test can only be satisfied) if the Plaintiff's customer base is concentrated in a particular jurisdiction. Id. Indeed, it was precisely the plaintiff's geographically concentrated customer base that was the deciding factor in Indianapolis Colts, Inc. v. Metropolitan Baltimore Football Club, 34 F.3d 410 (7th Cir. 1994). The Colts decision did not turn on the location of the headquarters of the team (which, apparently, was near Chicago), but rather on the geographic concentration of the fans who were allegedly "confused." Id. at 411-12 ("The Indianapolis Colts use the trademarks they seek to defend in this suit mainly in Indiana. . . . The bulk of the Indianapolis Colts' most loyal fans are, no doubt, Hoosiers . . . .") (emphasis added). The present case (involving trademarks advertised on a global basis) therefore cannot depend on Indianapolis Colts as a basis for asserting jurisdiction because purchasers of Ford, Lincoln, Volvo, Jaguar and other automobiles are not concentrated in Michigan to the substantial exclusion of other jurisdictions. The applicable analysis in this case (aside from the fact that trademark infringement is not generally an "intentional tort" that can even trigger a Calder "effects test" analysis) should be closer to the Sixth Circuit's analysis in Reynolds v. IAAF, 26 F.3d 1110 (6^th Cir. 1994), and the Fourth Circuit's analysis in ESAB Group, Inc. v. Centricut, Inc., 126 F.3d 617, 625-26 (4^th Cir. 1997). The applicability of the Reynolds/ESAB approach here is all the more evident considering the numerous decisions that squarely hold that the situs of "trademark injury" for jurisdiction purposes is not the Plaintiff's home jurisdiction. See note 1, infra. In this instance, "Ford admittedly has failed to set forth any evidence of actual contacts by the Registrant Defendants with the State of Michigan." Slip op. at 2. Therefore, jurisdiction is impossible, no matter how the Domain Names may be spelled. II. By Inventing Its Own, Novel, "Multi-Factor" Test, The Court Has Improperly Circumvented Consideration of the Controlling Polaroid / Sleekcraft Analysis. Next, rather than supplying a framework that can be applied consistently from case to case for all domain names generally, the Court seems to have ignored more general formulas that have applied perfectly well in the past, ²¹ and instead used a non-representative sample (consisting of nine names only) to construct its own approach (which is of doubtful utility even when applied to this statistically unrepresentative sample of nine out of millions). From at least one perfectly reasonable point of view, the purpose for inventing this new approach might appear to involve little more than reaching a particular result within only one isolated context, according to other subjective factors that the Court has not clearly disclosed. Because this Court is unlikely to have intended to act so arbitrarily, we respectfully invite this Court to revisit its March 30, 2001 Opinion and Order and to explain its distinctions among the nine specific Domain Names (admittedly, a statistically non-representative sample) in a generalizable and predictable way that will not be applied differently, arbitrarily, or unpredictably from court to court and case to case based on subjective factors. III. FORD Has Not Made A Proper Evidentiary Showing To Justify Jurisditional Discovery. Small businessmen like Wally Rawson -- whose automobile parts business (RADTECH) has been in his family for three generations -- must have an easy, effective, and inexpensive way to protect their legitimate rights. The rights that deserve protection include Rawson's fair use right to advertise truthfully that he sells not only genuine Ford replacement parts, but also Ford-compatible non-patented parts (Rawson was even an official Motorcraft distributor for many years, and continues to sell genuine Motorcraft parts in his retail business). If FORD can be permitted unilaterally to offer businessmen like Rawson the Hobson's choice between (a) discontinuing completely lawful and non-infringing fair use, or (2) being subjected to thousands and thousands of dollars of litigation expenses, in an inconvenient forum of FORD's choosing, and over which expenses FORD and not Rawson will exercise primary control, then the in terrorem* effect of threatened litigation will effectively grant to trademark owners like FORD anticompetitive and expression-suppressing powers that go far beyond any legitimate objective embodied in the Lanham Act. FORD, the Plaintiff, bears the burden of proof to establish personal jurisdiction. Serras v. First Tennessee Nat'l Bank, 875 F.2d 1212, 1214 (1989) (citing McNutt v. GMAC, 298 U.S. 178, 189 (1936)); accord Theunissen v. Matthews, 935 F.2d 1454, 1458 (6^th Cir. 1991). In order to earn the right to conduct jurisdictional discovery, FORD bears the burden of setting forth an affirmative case for such discovery. See note 7, supra (citing cases). Each of the EFF Defendants has set forth evidence in admissible form of the absence of jurisdictional contacts with the state of Michigan. ²² FORD has not responded to the Defendants' evidentiary showing with any "evidence" at all -- but instead with speculation based on spelling, and inadmissible legal argument masquerading as affidavit testimony. Further, each of the EFF Defendants has specifically and expressly denied ever "purposefully availing" themselves of the benefits and protections of the laws of the state of Michigan. They also deny ever directing "aiming" or "targeting" any actions toward the state of Michigan, or committing any tort (intentional or otherwise) directed at Michigan. ²³ If that denial was not previously clear enough, it is emphatically and clearly reiterated now. FORD's strategy in this case has been deliberately to attempt to minimize the amount of up-front work demanded of Plaintiffs, in order to make it as easy as possible for FORD to trigger discovery and, thereby, to use the expense of discovery for purposes of economic leverage (this is how FORD is funding its litigation by demanding reverse Robin Hood settlement premiums from Defendants -- for example Rawson already gave FORD the addresses FORD wants; FORD's lawyers just want blood money along with their pound of flesh): * FORD deliberately has kept its factual allegations to an absolute minimum; * Likewise, FORD also has deliberately chosen to keep the contents of its affidavits to an absolute minimum, and elected not to come forward with any actual facts (as opposed to legal argument masquerading as "testimony") but to rely instead on conclusory generalizations and speculation; * FORD has known since November the exact nature of, and factual basis for, the EFF Defendants' opposition to personal jurisdiction; * FORD has deliberately chosen not to conduct any discovery whatsoever or to conduct any real factual investigation (aside from character assassination); * The purpose of FORD's "bare bones" strategy ²⁴ has been to lay exactly the trap that this Court has walked into -- fooling this Court into issuing an opinion that effectively grants companies like FORD (or, more precisely, the lawyers who happen to represent FORD in this case) Carte Blanche to engage in economic intimidation against those who cannot afford to vindicate their rights in court. Under this Court's approach, FORD need not conduct any more of a pre-lawsuit investigation than merely identifying the spelling of the Domain Names, pulling up "Whois" records to identify the registrants and their addresses, and filing suit on that basis alone. If such a minimal set of factual allegations -- with respect to any Domain Name registrant (no matter how non-infringing the registrant's actions or intentions may be) -- nevertheless triggers an automatic situation in which FORD is granted unilateral control over both the forum of litigation and the amount of money that a Defendant can be forced to spend on open-ended "jurisdictional" discovery, then the merits are irrelevant because discovery becomes the whole show. Many, if not most, legitimate Defendants (e.g., "FordSucks.com") will unlawfully be intimidated into capitulation (as, apparently, has happened in this case). We respectfully believe such an approach is dreadfully wrong, especially because "Ford admittedly has failed to set forth any evidence of actual contacts by the Registrant Defendants with the State of Michigan." Slip op. at 2. We believe this Court was exactly right to point out at the January hearing that "shoot first and ask questions later" is no way to manage a lawsuit. FORD and its counsel have an obligation and responsibility to conduct a reasonably thorough pre-filing investigation before coming to court. With all respect to the March 30, 2001 Opinion, we believe that FORD and its counsel failed to meet the requisite threshold in this case. This question -- the specific quantum of evidence that FORD must submit in order to merit jurisdictional discovery from any Defendant (including foreign defendants), see note 7, supra -- is, in our view, an important matter on which the Sixth Circuit so far has provided too little concrete bright-line guidance. Trademark and copyright "cease-and-desist letters" and lawsuits such as this one are too often used to accomplish objectives inconsistent with the legitimate, narrow aims of the governing statutes. The Internet today is littered with the bodies of hundreds of thousands of Domain Name registrants and individual publishers whose conduct was perfectly lawful and non-infringing, but who were browbeaten out-of-court into submission by Hollywood movie studios, professional and college sports teams, consumer products companies, the Church of Scientology, and other entities that tend to be more litigious than most ordinary citizens. Except in a minuscule handful of cases, these Websites have not been shut down or subjected to unlawful censorship because of a court order at the conclusion of litigation. Quite the contrary, orgainizations like the EFF simply do not have the resources to mount defenses in more than a tiny handful of these cases. Instead, these cases are almost all resolved when small-time publishers of legitimate, non-infringing content capitulate in the face of intimidation. The principal source of intimidation is the threatened unilateral imposition of legal expenses -- mostly through the mechanism of burdensome and excessive discovery. Such tactics on the part of FORD's counsel should be rejected and an appropriate evidentiary threshold should be established in order to prevent discovery abuse by forum-shopping plaintiffs. CONCLUSION For these reasons, we respectfully pray that the Court reconsider its prior Opinion and Order. Additionally or alternatively, we pray that this Court certify the four legal questions, previously identified in the EFF Defendants' Motion, to the Sixth Circuit. Respectfully submitted, EFF DEFENTANTS, By counsel, April 23, 2001 ____________________________ Eric C. Grimm (P58990) CyberBrief, PLC 320 South Main Street P.O. Box 7341 Ann Arbor, MI 48107-7341 734.332.4900 David H. Lowenschuss (P53767) David H. Lowenschuss, PLC 2020 Shadford Road Ann Arbor, MI 48104 734.623.9877 Cindy Cohn, Legal Director Electronic Frontier Foundation 454 Shotwell Street San Francisco, CA 94110 415.505.7621 COUNSEL FOR EFF AND EFF DEFENDANTS. CERTIFICATE OF SERVICE I certify that the following documents: (1) The EFF Defendants' Motion for Reconsideration or Certification, and (2) The EFF Defendants' Supporting Memorandum, were served on All Parties and/or Counsel of Record, by depositing them with the United States Postal Service, with First Class Mail or more expeditious means of delivery prepaid, on or before April 23, 2001. ____________________________ Footnotes 1. Land-O-Nod Co., 708 F.2d at 1340-43 (no jurisdiction in location of "Chiropractic" trademark owner's headquarters because no infringing sales made in Minnesota); Keds Corp., 888 F.2d at 218; Tefal, S.A., 529 F.2d at 496 n.1; Vanity Fair Mills, 234 F.2d at 639; ESAB Group, Inc. v. Centricut, Inc., 126 F.3d 617, 625-26 (4^th Cir. 1997) (trade secrets) ("in cases upholding jurisdiction based on injury in the forum state to intellectual property or reputation, [t]he defendant had also 'entered' the state in some fashion"), cert denied, 523 U.S. 1048 (1998); Viam Corp. v. Iowa Export-Import Trading Co., 84 F.3d 424, 428-30 (Fed. Cir. 1996) (patent case); Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558, 1571 (Fed. Cir. 1994) (patent case); id. at 1570-71 nn.27, 31 (specifically rejecting approach from Acrison, Inc. v. Control & Metering Ltd., 730 F. Supp. 1445, 1448 (N.D. Ill. 1990)); Dakota Indus., Inc. v. Dakota Sportswear, Inc., 946 F.2d 1384, 1388-89 (8th Cir. 1991); Stabilisierungsfonds Fur Wein v. Kaiser Stuhl Wine Distributors Pty. Ltd., 647 F.2d 200 (D.C.Cir.1981); Schieffelin & Co. v. Jack Co., 725 F. Supp. 1314, 1319 (S.D.N.Y.1989); Hertz Sys., Inc. v. Hervis Corp., 549 F. Supp. 796, 797-98 (S.D.N.Y. 1982). 2. FORD's customer base cannot in any sense be described as "concentrated" in the way that the Indianapolis Colts' customer base was found to be concentrated by the Seventh Circuit. 3. Winter v. Koon, Schwartz & Co., 132 F. 273, 273-74 (C.C. Or. 1904); Sterling Consulting Corp. v. Indian Motorcycle Trademark, 1997 WL 827450 (D. Colo. Sept. 5, 1997). 4. The Court's factual assumption that "no other entity or person [other than FORD] could have a legitimate interest in [< fordmtorco.com >], slip op. at 13 (emphasis added), is also problematic because -- except in the trivial and circular sense that Ford can prevent tortious infringing uses only (passing off or counterfeiting of branded automobiles, among other examples) and no other uses of < fordmotorco.com > -- Ford's trademarks "bear no relationship to any right to exclude." College Sav. Bank v. Florida Prepaid Educ. Fund, 527 U.S. 666, 672-73 (1999) (emphasis added) (addressing application of Lanham Act to state governments). 5. EFF Defendants also respectfully disagree with the Court's other central premise -- the fiction that an ill-defined set of Domain Names can belong only to FORD and not to anyone else for any purpose whatsoever. See notes 15-16, infra (providing counter-examples). Hasbro already attempted to argue that Hasbro alone, and nobody else, can own "Clue.com," "Monopoly.com" and many other Domain Names. Hasbro's "proprietary interest in words" hypothesis has been squarely rejected. Hasbro v. Clue Computing, 66 F. Supp. 2d 117, 133 (D. Mass. 1999), aff'd, 232 F.3d 1, 3 (1^st Cir. 2000). Precisely because the policy functions and contours of trademark law differ markedly from the justifications for limited-duration patents and copyrights, see Mark A, Lemley, The Modern Lanham Act and the Death of Common Sense, 108 Yale L.J. 1694-95 & nn. 30, 31-32, 37, 1706-08 (1999), a naive fixation on the inaccurate label "intellectual property" is alarmingly likely to generate reasoning that lacks any legal or public policy foundation. Briefly, trademark law creates certain limited and defined tort remedies for acts of infringement, but (contrary to certain premature generalizations, see slip op. at 1), emphatically does not create "proprietary interests" in any word, phrase, or symbol enabling trademark owners selectively (on the basis of expressive content) to "exclude" everyone else in the world as though words or symbols were pieces of land. See, e.g., Mattel, Inc. v. MCA Records, 28 F. Supp. 2d 1120, (C.D. Cal. 1998) ("Mattel's distaste for the song's alleged message . . . [cannot] justify silencing speech critical of its product."); see also New Kids on the Block v. News Am. Publ'g Co., 971 F.2d 302, 309 (9th Cir. 1992). Obviously, FORD has no "exclusive" right to prohibit criticism, news reporting, fair use, parody, and many other uses of the word "FORD" (or even "fordmotorco.com") that FORD might desire to censor. 6. The March 30, 2001 Opinion and Order certainly does not explain how to distinguish -- on the basis of spelling -- between Domain Names in the so-called "expressly aimed" category (as though one can even "aim" a Domain Name registration at a particular jurisdiction!), Domain Names that are not necessarily so "aimed," and Domain Names (although the Court does not identify any) that clearly do not trigger either jurisdiction or discovery based on spelling alone. 7. Central States, 230 F.3d at 946-47 ("At a minimum, the plaintiff must make a colorable or prima facie showing of personal jurisdiction before discovery should be permitted. . . . Foreign nationals usually should not be subjected to extensive discovery to determine whether personal jurisdiction over them exists."); Theunissen, 935 F.2d at 1465; Chrysler Corp., 643 F.2d at 1239-40; Ellis, 175 F.R.D. at 312 ("[A] plaintiff is not always entitled to discovery to respond to a motion to dismiss for lack of personal jurisdiction."); Poe v. Babcock Int'l, plc, 662 F. Supp. 4, 7 (M.D. Pa. 1985) ("It would be inappropriate for this court to allow plaintiff to conduct a fishing expedition in order to construct a basis for jurisdiction."); Leema Enters., Inc. v. Willi, 575 F. Supp. 1533, 1536 (S.D.N.Y. 1983) ("Mere speculation, however, in the face of affidavit evidence conclusively to the contrary, necessitates denying plaintiff's request. . . . Plaintiff had no substantive basis for believing that personal jurisdiction existed when it commenced this suit, and it is inappropriate to grant them the opportunity to conduct a fishing expedition in an attempt to manufacture such a basis."); Caribbean Broadcasting Sys., Ltd. v. Cable & Wireless PLC, 148 F.3d 1080, 1089-90 (D.C. Cir. 1998); Jazini v. Nissan Motor Co., 148 F.3d 181, 185-86 (2^nd Cir. 1998); Noonan v. Winston Co., 135 F.3d 85, 94-95 (1^st Cir. 1998); Naartex Consulting Corp. v. Watt, 722 F.2d 779, 788 (D.C. Cir. 1983); McLaughlin v. McPhail, 707 F.2d 800, 806-07 (4^th Cir. 1983); Greenspun v. Del E. Webb Corp., 634 F.2d 1204, 1208 n.5 (9^th Cir. 1980); Lehigh Valley Indus., Inc. v. Birenbaum, 527 F.2d 87, 93-94 (2^nd Cir. 1975); H.L. Moore Drug Exch., Inc. v. Smith, Kline & French Labs., 384 F.2d 97, 97-98 (2^nd Cir. 1967); Hansen v. Neumuller GmbH, 163 F.R.D. 471, 474-76 (D. Del. 1995); International Terminal Operating Co., Inc. v. Skibs A/S Hidlefjord, 63 F.R.D. 85, 87-88 (S.D.N.Y. 1973). 8. Volvo Trademark Holdings AB is a Swedish corporation with a principal place of business at c/o AB Volvo, VHK, dept 641, SE-405 08 Goteborg, Sweden. 9. About half the global output of Jaguar is sold in the United States. The remainder is sold in other countries. The U.S. arm of Jaguar Cars is not located in Detroit at all. Its address is: Jaguar Cars; 555 MacArthur Boulevard; Mahwah, NJ 07430-2327. 10. Aston Martin Lagonda Limited, Tickford Street, Newport Pagnell, Bucks, United Kingdom, MK16 9AN. Telephone Number: +44 (0) 1908 610620. 11. Just as logs never have been part of the Lincoln product line, see slip op. at 17-18, trucks never have been either. Importantly, "Lincoln Logs," too, were once a new market entrant. (Query: Given the Court's seeming eagerness to find "famousness," despite the multitude of other goods and services named "Lincoln," could Lincoln Logs or Lincoln Center today enter the market without running afoul of the Federal Trademark Dilution Act?). The Court's presuppositions about "famousness" -- without requiring any proof whatsoever on Ford's part, or conducting any of the difficult and intensive analysis that has vexed so many appellate courts -- are certainly premature. E.g., 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) ("greatest snow on earth" does not dilute circus slogan). Inasmuch as < lincolntrucks.com > would clearly be useful to, e.g., a used car dealership in New York, see note 14, infra, or a dealer of large commercial vehicles in Lincoln, Nebraska, Alfonso Fiero respectfully suggests that FORD is not entitled to an automatic or presumptive monopoly. 12. E.g., < http://www.omahatruck.com/ >; < http://www.recycle.net/assn/ara008.html >; < http://www.westernstartrucks.com/dealers/usa/nebraska.htm >; < http://e-freightliner.com/lincoln/index.html >; < http://www.airport-carrentals.com/lincoln.htm >. 13. Moreover, the only other Domain Names that appear to have been registered by Mr. Fiero (only two of them) also contain geographic references. We specifically note, incidentally, that www.lincoln.com -- at least in early April, 2001 -- was not used by any of the Plaintiffs. 14. Lincoln Auto Service, 6628 Lincoln Ave., Lockport, NY 14094. (716) 433-2000. 15. Indeed, it is precisely the kinds of uses that FORD is most likley to condemn -- such as parody or criticism -- that require the most protection. See Mattel, Inc. v. MCA Records, 28 F. Supp. 2d 1120 (C.D. Cal. 1998). If FORD were to attempt (i.e., by filing a SLAPP suit) to act under color of federal or state trademark law to suppress non-infringing protected expression (or even to attempt to marginalize speech through forced relocation to a second-best address), then FORD can and should be held liable for civil rights violations under 42 U.S.C. §§ 1983, 1985 and/or Bivens v. Six Unknown Names Agents of the Fed. Bureau of Narcotics, 403 U.S. 388 (1971). See Wyatt v. Cole, 504 U.S. 158, 161-62 (1992) (private invocation of enforcement powers of government can constitute "action under color of state law"). 16. One example alone (of literally hundreds we could give) should suffice to show that FORD does not have any automatic or exclusive right to monopolize < lincolntrucks.com > or < fordmotorco.com > -- especially if someone else has registered it first. Assume that a human rights group is the first to register the Domain Name < fordmotorco.com > and uses it to publish a highly critical and newsworthy Website that details human rights abuses at factories in Indonesia, environmental damage in Mexico, and/or labor violations in the United States and Canada. See, e.g., Lucent Tech. v. Lucentcucks.com, 95 F. Supp. 2d 529, 535-36 (E.D. Va. 2000) (publication of truthful criticism is constitutionally and statutorily protected); Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161, 1164 (C.D. Cal.1998). The address plainly gives such legitimate users (who are making non-trademark and/or fair use of the company name) much better access to their legitimate and intended audiences than some more-obscure address. Indeed, it is precisely because FORD has thrust its trademarks into the public arena and sought to transform these marks into icons in the public consciousness, that FORD therefore has no right to complain when others make (or enable third parties to make) legitimate fair use or non-trademark use of FORD's tradenames. This stands in marked contrast to traditional rules governing expressive uses of -- and exclusion of speakers from -- real property. Hudgens v. NLRB, 424 U.S. 507 (1976); Lloyd Corp. v. Tanner, 407 U.S. 551 (1972). But see PruneYard Shopping Center v. Robins, 447 U.S. 74 (1980) (state law may entitle speakers to greater rights). 17. The Court's subjective remarks about how much "likelihood of confusion as to who controls the domain . . . is created by the domain itself" completely misapprehends the function of the "Whois" mechanism for Domain Names -- which specifically identifies the name and contact information for the current resident and, through clear information, precludes all possibility of "confusion as to who controls the domain . . . created by the domain itself." In other words, the Court's belt-and-suspenders "lexical context" theory attempts in a rather haphazard and ineffective way to solve a problem that already has been solved quite elegantly. 18. Moreover, this court's misleading language about "missapropriation" -- as if to suggest (falsely) that something previously "belonging to" FORD has been "taken away" -- has no basis in trademark law. Even assuming, hypothetically, that some other aspects of FORD's trademarks could be characterized as involving some power to exclude infringers (but, presumably, nobody else), nevertheless, "Not everything which protects property interests is designed to remedy or prevent deprivations of those property interests. A municipal ordinance prohibiting billboards in residential areas protects the property interests of homeowners, although erecting billboards would ordinarily not deprive them of property." College Savings Bank, 527 U.S. at 674. In short, trademarks -- including unfair competition remedies for "customer confusion" -- do not involve "property," and certainly do not involve "misappropriation," at least in the sense this Court has, perhaps prematurely, suggested. 19. What Calder did was recognize that, under certain circumstances, the 'plaintiff's residence in the forum may, because of defendant's relationship with the plaintiff, enhance defendant's contacts with the forum.'" Id. (emphasis added) (quoting Keeton v. Hustler Magazine, 465 U.S. 770, 780 (1984). 20. Of course, the Court conspicuously ignores a directly analogous litany of factors indicating that Detroit cannot represent a "focal point" of the Plaintiffs' allegations of injury to allegedly "worldwide" Jaguar, Aston-Martin, Ford, Volvo, and other brands. 21. See, e.g., Data Concepts, Inc. v. Digital Consulting, Inc., 150 F.3d 620, 627 (6th Cir. 1998) (reversing summary judgment based on Polaroid/Sleekcraft factors: "The magistrate judge's analysis . . . was clearly inadequate."); Holiday Inns, Inc., 86 F.3d at 623; Interstellar Starship Servs. v. Epix, Inc., 125 F. Supp. 2d 1269, 1273-82 (D. Or. 2001); GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1206 (9th Cir. 2000); Interstellar Starship Servs., Ltd. v. Epix Inc., 184 F.3d 1107, 1110 (9th Cir. 1999); Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1054 (9th Cir. 1999); Cello Holdings, L.L.C. v. Lawrence-Dahl Companies, 89 F. Supp. 2d 464, 473 (S.D.N.Y. 2000). 22. Dkt Nos. 63 (Decl. of Paul Brown); 64 (Decl. of Thomas Cooper); 65 (Decl. of Alfonso Fiero); 66 (Decl. of Wallace Rawson); 67 (Decl. of John Hall); 68 (Decl. of Robert Emmert); 86 (Supplemental Decl. of John Hall). 23. See Rawson Decl. at ¶¶ 8-9, 17 ("I have never done any tortious act within the State of Michigan or caused any tortious act to be done, or consequences to occur in the State of Michigan. . . . I have never purposefully availed myself of the state of Michigan or of the benefits and protections of its laws, at any time whatsoever."); Fiero Decl. ¶¶ 6, 14; Cooper Decl. at ¶¶ 9, 18; Hall Decl.; Brown Decl. at ¶¶ 3, 4, 8, 18. 24. More precisely, the strategy is that of FORD's Salt Lake City counsel -- the Howard, Phillips & Anderson law firm -- who dreamed up the ACPA, and are now trying to use it in this case to demand settlement premiums from all registrants other than Hans Rekestad, the Swedish registrant of < ClassicVolvo.com > -- who, although represented by EFF, has never been served with summons. FORD's reasons for the differential treatment of Rekestad are unclear.


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