Robert Novak, former owner of the website Petswarehouse.com, filed a pro se suit against Google, Overture Services, Kanoodle, Judge-for-Yourself.com, and Biochemics in the Eastern District of New York, alleging trademark infringement and unfair competition among other claims. Novak alleged that the defendant owners of Internet search engines, contracted with the other defendants to manipulate website searches involving the words “pets” and “warehouse” such that the defendants’ websites appeared at the top of the search results instead of Novak’s website. Novak claimed that this arrangement was trademark infringement, a deceptive trade practice, and unfair competition. Novak also alleged that Google breached its own terms and conditions by refusing to remove material from its online discussion groups that Novak found offensive and that this refusal tortiously interfered with contractual relations. The defendants filed motions to dismiss for lack of personal jurisdiction, improper venue, and failure to state a claim. Defendant Google filed a motion to dismiss for improper venue and failure to state a claim with respect to Novak’s breach of contract claim. The court dismissed this count of Novak’s complaint, holding that Google is immune from liability under 47 U.S.C. § 230, which provides that "[n]o provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider." The court also held that a forum selection clause in Google’s terms and conditions is enforceable and dismissed all claims based upon the performance of those terms and conditions for improper venue.
Defendants Biochemics and Judge-for-Yourself.com, neither being domiciliaries of New York state, filed motions to dismiss for lack of personal jurisdiction. New York’s long-arm statute confers jurisdiction over a defendant who “transacts any business within the state or contracts anywhere to supply goods or services in the state.” N.Y. C.P.L.R. § 302(a)(1). A single transaction in the state is sufficient to invoke jurisdiction. Biochemics has a website through which products may be ordered. Because the company derived more than six thousand dollars per year from New York residents through its website, the court held that the long-arm statute reaches Biochemics. Judge-for-Yourself.com, in contrast, sells no goods, solicits no business, and sells no advertising. They, however, contracted with Kanoodle, a New York corporation, regarding certain key words, a relationship that generated more than $17,000 in 2002. The court held that this transaction was sufficient to confer jurisdiction over Judge-for-Yourself.com.
Defendant Biochemics’s motion also alleged a failure to state a claim on the grounds that Novak did not own a protectable trademark. To establish a trademark claim, the plaintiff must show that he owns a valid mark entitled to protection and that the defendant used the mark without the plaintiff’s consent in a way that will likely cause confusion. Biochemics motion to dismiss claimed that Novak did not own a protectable mark. The court identified four categories of trademarks: generic, descriptive, suggestive, and arbitrary or fanciful. Generic marks do not receive trademark protection under any circumstances because they merely describe the product. Biochemics argued that “Pets Warehouse” is a generic mark that should not be afforded trademark protection.
Biochemics provided a written arbitration decision issued by the World Intellectual Property Organization (WIPO), an international non-governmental entity that deals with the administration of intellectual property rights on the internet, that declared that the mark “pet warehouse” was too generic for trademark protection. The court noted, however, that the decision carries no precedential weight and that it is unclear whether the decision was made pursuant to US trademark law. Because the validity of the mark could not be determined without further investigation beyond the pleadings, the court denied the motion to dismiss but left open the possibility of reexamining the issue at the summary judgment stage of litigation.
