IP Law Daily, COPYRIGHT—N.D. Ill.: An interactive website accessible in Illinois is not enough, on its own, to give a Chicago court jurisdiction, (Sep 12, 2022)

By Matthew Hersh, J.D.

Because there was no evidence anyone in Illinois had actual ekly interacted with the website, the claim of personal jurisdiction failed.

A Texas-based entertainment company could not be haled into an Illinois court based on its maintaining of an interactive website accessible in that state where there was no evidence that any Illinois resident actually interacted with the website, the federal district court for Chicago has held. The court, granting the entertainment company’s motion to dismiss a copyright and trademark infringement lawsuit brought by a jilted tour partner, found the Texas’s company’s contacts with Illinois insufficient to allow the lawsuit to go forward (BMN Entertainment, LLC v. Je’Caryous Johnson Entertainment LLC, September 7, 2022, Pacold, M.).

The case involves a comedy tour known, at least initially, as the No Cap Comedy Tour. The tour was put on by Je’Caryous Johnson, a Texas-based writer, director, producer, and promoter of urban entertainment, including an urban comedy show and even an “urban Shakespeare” production. The tour was initially run by Johnson’s entertainment company in collaboration with BMN Entertainment LLC, the ostensible owner of the No Cap Comedy Tour trademarks. But the companies eventually parted ways, with the entertainment company continuing to tour on its own under the No Cap Comedy Tour label.

The trademark owner sued in a Chicago federal court, alleging copyright infringement, false designation of origin and unfair competition under the Lanham Act, violation of the Illinois Consumer Fraud and Deceptive Business Practices Act, and a variety of common law violations. The Texas entertainment company moved to dismiss on grounds of personal jurisdiction, leading to this opinion.

Personal jurisdiction. The court granted the motion to dismiss, finding that it had no jurisdiction over the Texas company.

The court first found that the Texas company had no meaningful contacts with Illinois that arose out of the claims in the lawsuit. The trademark holder correctly identified several of the Texas company’s activities in Illinois, including the promotion of several shows in Chicago. But none of these contacts arose out of the specific allegations in the lawsuit, the court concluded. Some of those shows were done in collaboration with the trademark holder—which meant they were not unlawful—while others were done under the guise of a show labeled the We Outside Comedy Tour, which was not claimed to be infringing. Personal jurisdiction could not be based on these contacts, the court concluded.

Nor did the Texas company purposefully avail itself of Illinois connections, the court concluded. “Purposeful direction may be shown by evidence that the defendant’s actions, even if initiated outside of the forum state, nevertheless were directed at the forum state,” the court observed. But none of the Texas company’s contacts met this standard. To be sure, the Texas company allegedly knew that its conduct would harm the Illinois-based trademark holder, the court noted, but “merely knowing that the plaintiff is located in Illinois and taking actions outside Illinois that affect the plaintiff is insufficient.” Nor did it matter that the Texas company maintained an interactive website that was accessible from Illinois. The website in question merely contained a “stay connected” feature where a person could enter their email address and select a city from a dropdown—including the option of Chicago—to be sent messages about shows in that location. But crucially, the court noted, the trademark holder showed no evidence that anyone with an Illinois address actually interacted with the website. That doomed the claim.

The case is No. 1:22-cv-03741.

Attorneys: Theodore Joseph Chiacchio (Chiacchio IP, LLC) for BMN Entertainment, LLC. Jeff C. Wigginton (Chamberlain, Hrdlicka, White, Williams & Aughtry, PC) for Je'Caryous Johnson Entertainment LLC.

Companies: BMN Entertainment, LLC; Je'Caryous Johnson Entertainment LLC

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