Berklee College of Music, Inc v Music Industry Educators, Inc., Civil Action No. 09-cv-11627-JLT, 2010 U.S. Dist. LEXIS 78970 (D. Mass. Aug. 4, 2010) (Tauro, D.J.) [Infringement, Personal Jurisdiction].

Plaintiff Berklee College of Music, Inc. (“Berklee”) brought this action against Defendants Music Industry Educators, Inc. (“MIE”) and its majority owner John Terrell, alleging trademark and copyright infringement, unfair competition, and deceptive trade practices under M.G.L. c. 93A stemming from publication of Berklee’s copyrighted material and trademarks on MIE’s website. MIE, a Florida corporation, moved to dismiss this action for lack of personal jurisdiction and improper venue. Additionally, MIE moved to dismiss the 93A claims under a theory of federal preemption.

The District Court (Tauro, D.J.) held that personal jurisdiction exists over MIE because MIE’s “alleged misuse of trademarks belonging to a Massachusetts company is enough to constitute minimum contacts for the purpose of establishing personal jurisdiction.” Specifically, with regard to the relatedness prong of the personal jurisdiction inquiry, the Court found that the underlying claims arise out of MIE’s activities in Massachusetts because the allegedly infringing materials were taken from Berklee’s website in Massachusetts. The District Court noted that “it is well-established that the relatedness prong is satisfied when . . . the alleged wrong arises out of the publication of a website ‘continuously available to Massachusetts residents and causing tortuous injury in Massachusetts.’” Similarly, with regard to the purposeful availment prong of the personal jurisdiction inquiry, the Court held that Defendants purposefully availed themselves of the privilege of doing business in Massachusetts because MIE “targeted” Berklee by allegedly copying Berklee’s marks without permission and transmitting the allegedly infringing marks back into Massachusetts via MIE’s own website. Finally, with regard to the reasonableness prong of the personal jurisdiction inquiry, the Court noted that the burden on MIE in appearing in Massachusetts was limited because MIE, through its alleged conduct, “knowingly assumed the risk” of being required to appear in a Massachusetts court.

Noting that defendant Terrell was the founder and sole corporate officer of MIE and that responsibility for the allegedly infringing acts seem to “fall squarely on Terrell’s shoulders,” the District Court also held that Terrell is subject to personal jurisdiction in Massachusetts. “[T]he First Circuit held that a corporate officer may be subject to personal jurisdiction based on infringing acts of his employer if he is a ‘moving, active, conscious force behind the infringement.’”

The District Court also summarily denied MIE’s motion to dismiss for improper venue, noting that a defendant corporation is “deemed to reside in any judicial district in which it is subject to personal jurisdiction at the time the action is commenced.” With regard to defendant Terrell, the District Court held that Massachusetts is a proper venue “whenever personal jurisdiction may be obtained under the applicable long-arm statute thereby collapsing the two concepts into one.”

Finally, with regard to Berklee’s 93A claim, the District Court noted that although state causes of action based on copyright are generally preempted, preemption is not appropriate in this case because the 93A claim is additionally based on trademark infringement.