May 2, 2007. Mallorca, Spain. On this side, the world's number 1 male tennis player -- Roger Federer -- who also happens to be considered the best grass court tennis player. On the other side, the world's number 2 male tennis player -- Rafael Nadal -- who happens to be considered the best clay court tennis player. ESPN covered the story here.
Renata Marcinkowska was awarded U.S. Patent No. 6,814,669 titled "Dual Surface for Sport Event or Game." The day before the match, Marcinkowska (herself a former professional tennis player) commenced an action against an advertising company in Spain and a sports marketing and management company in Ohio. Problem is, she filed suit in South Carolina, and neither defendant was subject to personal jurisdiction there. The defendants moved to dismiss on that basis, and also argued that Marcinkowska's complaint failed to state a claim upon which relief can be granted. The court granted the motion on both counts, and dismissed with prejudice.
Marcinkowska appealed. After walking through analysis for personal jurisdiction the Court affirmed. There was no allegation that an intentional tort (i.e. patent infringement) took place in South Carolina. So the Federal Circuit affirmed.
Regarding the 12(b)(6) motion to dismiss for failure to state a claim, the Federal Circuit noted that IMG did not make, use, sell, or offer for sale the subject matter of the '669 patent in the U.S. Marcinkowska argued that IMG promoted the match on its website, and let people in the U.S. download photos from the event. She also argued that IMG promoted its own services by broadcasting depictions of the dual surface tennis court in the U.S. The trial court found this too thin to be "use," and the appellate court agreed:
As a practical matter, the exhibition promoted on the internet and televised throughout the world was held on a tennis court built and housed in the Kingdom of Spain, and it was this Spanish tennis court that provided the playing surface for the “Battle of the Surfaces” exhibition over which IMG and other entities obtained trademarks, advertised, and licensed broadcast rights throughout the world. In this case, the hybrid tennis court was not “used” in the United States - it was “used” in Spain and that use was broadcast in the United States.
You can watch some of the match here:
Decision affirmed
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