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Heroes, Inc. v. Heroes Foundation, et al.

The United States District Court for the District of Colombia held that an out-of-state charitable organization was subject to jurisdiction in Washington D.C. in a trademark infringement action based on (a) an advertisement which allegedly infringed plaintiff's service mark which was run in a newspaper circulated in D.C, by Proctor & Gamble with defendant's knowledge and from which defendant derived substantial income, and defendant's maintenance of a home page on the available to D.C. residents. Plaintiff was a charitable organization based in Washington D.C. that provides assistance to the surviving members of the families of D.C. law enforcement officers and fire fighters killed in the line of duty. It uses the service mark Heroes in connection with its work. Defendant, based in New York, initially engaged in similar charitable activities. Later, it started soliciting donations for cystic fibrosis. In connection with these efforts, defendant uses the name the Heroes Foundation. Claiming confusion, plaintiff commenced a trademark infringement and unfair competition lawsuit. Defendant moved to dismiss for want of personal jurisdiction. The court rejected this motion. In so doing, it held that the following contacts were sufficient to permit the assertion of personal jurisdiction over the defendant: 1. Proctor & Gamble ran a series of advertisements in a national campaign, which offered consumers coupons to use toward the purchase of Proctor & Gamble products. The advertisements informed the reader that use of the coupon would result in a donation to the Heroes Foundation. The ad, which featured a picture of Boomer Esiason and his son, contained the words "Help donate $100,000 to Boomer Esiason's Heroes Foundation and Find a Cure for Cystic Fibrosis." Among other papers, the ad ran in the Washington Post. The ad was designed, paid for and placed by Proctor & Gamble with defendant's consent. Defendant derived substantial revenue from the placement of the Washington Post ad. 2. Defendant maintained a home page on the accessible by Washington D.C. residents. The home page, which contained the name the "Heroes Foundation," solicited donations for the organization, and offered communication either by e-mail or a posted 800 number. In reaching its conclusion that defendant was subject to jurisdiction in D.C., the court said that "because the defendant's home page is not the only contact before the Court, the Court need not decide whether the defendant's home page by itself subjects the defendant to personal jurisdiction in the District."