gator.com Corp. v. L.L. Bean, Inc.

398 F.3d 1125 GATOR.COM CORP., Plaintiff-Appellant, v. L.L. BEAN, INC., Defendant-Appellee. No. 02-15035. United States Court of Appeals, Ninth Circuit. Argued and Submitted June 22, 2004. Filed February 15, 2005. Michael Traynor, Cooley Godward LLP, San Francisco, CA, argued the cause for the appellant; Thomas J. Friel, Jr., and Brian E. Mitchell, Cooley Godward LLP, San Francisco, CA, and L. Scott Primak, Redwood City, CA, were on the briefs. Daniel J. Bergeson and Melinda M. Morton, Bergeson, LLP, San Jose, CA, were substituted as counsel for the appellant after oral argument. Peter J. Brann, Brann & Isaacson, Lewiston, Maine, argued the cause for the appellee; Kevin J. Beal, Brann & Isaacson, Lewiston, ME, was on the brief. Alan E. Untereiner, Kathryn Schaefer Zecca, and Max Huffman, Robbins, Russell, Englert, Orseck & Untereiner LLP, Washington, D.C., and Robin S. Conrad and Stephanie A. Martz, Washington, D.C., were on the brief for amicus curiae The Chamber of Commerce of the United States. Appeal from the United States District Court for the Northern District of California; Maria-Elena James, Magistrate Judge, Presiding. D.C. No. CV-01-01126-MEJ. Before:…

with whom RYMER and McKEOWN, Circuit Judges, join, concurring:

Even assuming that the dissent is correct that the parties continue to contest— with a monetary stake in the outcome' — -the issue of personal jurisdiction, that does not amount to an Article III “case or controversy.” The case or controversy at stake in this litigation was whether Gator’s pop-up ad program violated L.L. Bean’s trademark and other primary rights. As the court concludes — and the dissent does not challenge — that controversy has been concluded by the settlement agreement.

The remaining “controversy” of whether the California courts can assert personal jurisdiction over L.L. Bean will settle no dispute between the parties involving any of their primary rights. For it involves only the subsidiary, threshold issue of whether a California court has the power to adjudicate the parties’ dispute. But, under the settlement agreement, no dispute — no case or controversy — involving any of the parties’ primary rights remains. Thus, as the court’s opinion aptly states, the $10,000 is truly only a “side bet.” If we were to hold that the district court could assert personal jurisdiction over L.L. Bean, there…

with whom GRABER and PAEZ, Circuit Judges, join, dissenting:

The majority concludes that this appeal is moot because “the parties’ settlement agreement has resolved all facets of their dispute.” Op. at 1132. This is not true. One “facet[ ] of their dispute” — indeed, the only question at issue in the appeal — has not been resolved.

The parties continue to dispute whether a federal district court in California has personal jurisdiction over L.L. Bean. They *1134 have disputed this since the beginning of this litigation. Both parties had, and still have, an interest in our resolution of that dispute. Depending on how we resolve it, either Gator owes L.L. Bean $10,000 or it does not. Nothing more is required for our continuing jurisdiction.

I

Gator sued L.L. Bean in the United States District Court for the Northern District of California seeking a declaratory judgment that its pop-up ads did not infringe L.L. Bean’s trademark or other proprietary rights, and that it was not engaging in any unfair or deceptive trade practices. L.L. Bean is a Maine corporation with its principal place of business in Maine. It advertises in California, both by mail and over the internet, and it…

We must decide whether a declaratory judgment action initiated to determine the legality of a software vendor’s pop-up advertising program is rendered moot by a settlement under which the vendor permanently modified its software and the website owner relinquished all claims.

I

Gator.com Corporation 1 is the proprietor of a software program that enables computer users to store personal information — including addresses, credit card numbers, and passwords — in a “digital wallet.” When a website prompts the user for such information, Gator’s digital wallet automatically inputs it. The program also provides users with discount coupons and other special offers that “pop up” on the computer screen when the user visits certain websites preselected by Gator. Until November 20, 2004, one of the targets of Gator’s pop-up advertisements was the website operated by L.L. Bean, Inc., a clothing manufacturer that sells its products over the Internet, via a mail-order catalog, and in retail stores. When a user of computer equipment on which the Gator software was installed visited L.L. Bean’s website, the program triggered a discount coupon for Eddie Bauer — an L.L. Bean competitor — to appear…