Photograph of Model Dancing Copyrighted Bronze Dance Steps Could Be Fair Use

Earlier this year, posts on this blog discussed fair use in the context of the Shepard Fairey/AP dispute over Fairey’s use of AP’s photo to create his Obama HOPE poster and the Cooks Source Magazine controversy about the use of a blogger’s recipe in that magazine.  The source of the fair use dispute discussed in this post is the bronze dance steps on Broadway Street in Seattle.  The Story Behind the Steps in the Sidewalk includes a picture showing some of the steps.  Western District of Washington Judge Robert S. Lasnik recently denied plaintiff’s motion for summary judgment to dismiss defendant’s fair use affirmative defense.

Facts.  The court indicated that these facts are undisputed.  The significance of an undisputed fact is that an undisputed fact cannot create a genuine issue of material fact.  A summary judgment motion is defeated by genuine issues of material fact.  A genuine issue of material fact is a disagreement between the parties on the facts legally relevant to a claim.

Plaintiff Jack Mackie is a creator and copyright owner of bronze dance steps that are embedded in the sidewalk along Broadway Street in Seattle.  The work is entitled “Dance Steps on Broadway” and is comprised of eight different dance patterns embedded in separate locations along Broadway.  Plaintiff was inspired by Gene Kelly’s singing and dancing in the street in the movie, Singin’ in the Rain.  He wanted to see whether people would dance along the street if they were given the steps.  Plaintiff researched the dances, learned the steps, and worked with a foundry on the molds.

Defendant Michael J. Hipple is a photographer who took a picture of a model’s feet and legs while the model was dancing on the Mambo portion of plaintiff’s work.  Defendant’s intent was to try out his new swing tilt camera lens.  He intended for the bronze steps to be part of the photograph, but intended the dancing “feet with the star shoes and the legs of the model” to be the focus of the photograph. 

Plaintiff sued defendant for copyright infringement and brought a motion for summary judgment to dismiss defendant’s fair use affirmative defense.

Summary Judgment Legal Standard.  “The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.”  Fed.R.Civ.P. 56(a).  To win a summary judgment motion, the moving party must show that no reasonable trier of fact could find for the non-moving party on any issue in which the moving party has the burden of proof at trial.  “The Court must view the evidence in the light most favorable to the nonmoving party and draw all reasonable inference in that party’s favor.”  (Order pdf page 3).

Fair Use.

The fair use defense permits the use of copyrighted works without the copyright owner’s consent under certain situations….The defense encourages and allows the development of new ideas that build on earlier ones, thus providing a necessary counterbalance to the copyright law’s goal of protecting creators’ work product.

(Order pdf page 4). 

Courts examine four factors to determine whether the use of a copyrighted work is a fair use:

  1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
  2. the nature of the copyrighted work;
  3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
  4. the effect of the use upon the potential market for or value of the copyrighted work.

17 U.S.C. §107.

Purpose and Character of Use.  Analysis of this factor includes these subfactors:  whether the use is of a commercial nature, whether defendant acted in good faith, and whether the new work is transformative.  (Order pdf page 5). 

The court indicated that a commercial use is presumptively an unfair exploitation of the copyright owner’s monopoly privilege.  The “crux of the profit/nonprofit distinction is not whether the sole motive of the use is monetary gain but whether the use stands to profit from exploitation of the copyrighted material without paying the customary price.”  (Order pdf page 5).  Defendant was in a position to make a small profit from his photograph.

The defendant’s conduct is relevant to the character of the use.  Defendant argued that he acted in good faith and plaintiff did not contest the propriety of defendant’s conduct.

The parties disagreed on the transformative nature of defendant’s work.  A transformative work “adds something new, with a further purpose or different character, altering the first with new expression, meaning or message.”  (Order pdf page 5).  The court found that there was an issue of material fact regarding whether defendant’s work was transformative enough.

Nature of Copyrighted Work.  Some works are more creative than others.  Fair use is harder to establish when the original work is highly creative.  Defendant argued that because plaintiff undertook extensive research, his dance steps are informational.  Although plaintiff researched the steps, he also changed the steps to make it more clear where to step next.  The court thought the plaintiff had a stronger argument that the dance steps are creative in nature, but ruled that there was an issue of material fact regarding the nature of the copyrighted work.

Amount and Substantiality of the Portion Used.  The court indicated that defendant’s photo quantitatively used a small portion of the copyrighted work.  The work includes eight dance patterns and the photo included a portion of one, the Mambo.  Plaintiff argued that the amount used by defendant captures the essence of the work.  The court ruled that “a reasonable juror could conclude that the legs and shoes were the focal point of the photograph, rather than the dance steps,” and ruled that plaintiff did not meet his burden on this factor.

Effect of Use upon Potential Market.  The court declared that this is the “single most important element of fair use.”  (Order pdf page 7). 

Fair use, when properly applied, is limited to copying by others which does not materially impair the marketability of the work which is copied.

(Order pdf page 7).

Although plaintiff does not sell photographs of his dance steps work and has not received a fee for licenses or releases he has given, the past conduct of the copyright holder is not the proper focus of this inquiry.  The court stated that “unauthorized photographs of the dance steps sold for profit could have an adverse market effect on the original and derivative works.”  (Order pdf page 7).

Even though “plaintiff’s arguments are stronger in some factors, and weaker in others,” the court ruled that the plaintiff did not meet his burden on summary judgment and denied plaintiff’s motion to dismiss defendant’s fair use defense.  (Order pdf page 8).

The parties notified the court of a settlement and the case was dismissed on June 21, 2011.

This case is Jack Mackie v. Michael J. Hipple, et al, C09-164 RSL, Western District of Washington at Seattle.

Copyright, Lanham Act and Some State Law Claims Survive Motion to Dismiss in Floral Art Case

Plaintiff Susan Tierney Cockburn filed suit (pdf) in the Western District of Washington against five out of state defendants – one manufacturing defendant and four retail defendants.  The defendants filed motions to dismiss the complaint for lack of personal jurisdiction and to dismiss plaintiff’s Lanham Act (federal trademark) and state law claims for failure to state a claim upon which relief can be granted under Fed. R. Civ.P. 12(b)(6).  The defendants also questioned whether plaintiff’s works were copyrighted, although that does not appear to have been part of the formal motion.  Judge Robert S. Lasnik granted the motion to dismiss in part and denied it in part.

Facts.  Plaintiff is a professional author and artist in Redmond, Washington.  She creates floral art with paper and three dimensional paper flowers for use in crafts and hobbies.  She “developed a unique line of paper punches to enhance her paper floral art and three dimensional paper flowers.”  (Order pdf page 2).  Plaintiff registered copyrights for two books:  Paper Bouquet and The Paper Garden – Summer Blooms.

Defendant SWS Industries, Inc. is an Illinois corporation that manufactures punches used in office products, industrial supply/hardware and crafts.  An SWS representative contacted plaintiff in 2009, asking whether plaintiff would work with it on augmenting its existing paper punches.  SWS later presented plaintiff with a contract to purchase and manufacture her floral designs, but the parties failed to come to an agreement.  Plaintiff alleges that SWS created infringing works which it sold to Internet and retail customers all over the United States.  Plaintiff alleges that the retail defendants sold SWS’s infringing products either online or through retail stores.  The retail defendants are Archiver’s, a Minnesota corporation, Notions, a Michigan corporation, Moore, a Florida corporation, and CreateForLess, LLC, an Oregon limited liability company.  The defendants are not licensed to do business in Washington state and do not have employees or a physical presence in Washington.

Plaintiff claimed copyright infringement, violation of the Lanham Act, 15 USC §1125(a), violation of Washington’s Consumer Protection Act, and violation of Washington trade dress and trade name protection.  She sought a constructive trust and an accounting, both of which are state law claims.

Personal Jurisdiction.  The court undertook the same analysis described in my June 1, 2011, post Personal Jurisdiction Found Lacking in Copyright Infringement Action.  Washington State’s long arm statute extends to the limit of the Due Process Clause. 

For a forum state to have personal jurisdiction over an out-of-state defendant, that defendant must have certain minimum contacts with the forum state, such that the maintenance of the suit does not offend traditional notions of fair play and substantial justice.

(Order pdf page 5).

The court set out the three-part test used in the Ninth Circuit to analyze specific jurisdiction:

  1. The non-resident defendant must purposefully direct his activities or consummate some transaction with the forum or resident thereof; or perform some act by which he purposefully avails himself of the privilege of conducting activities in the forum, thereby invoking the benefits and protections of its laws;
  2. the claim must be one which arises out of or relates to the defendant’s forum-related activities; and
  3. the exercise of jurisdiction must comport with fair play and substantial justice, i.e. it must be reasonable.

(Order pdf page 5).

The court indicated that “[i]n tort cases, courts typically inquire whether a defendant purposefully directs his activities at the forum state, applying an ‘effects’ test that focuses on the forum in which the defendant’s actions were felt, whether or not the actions themselves occurred within the forum.”  (Order pdf page 6).  Tort claims include a claim for willful copyright infringement. 

The first part of the above three-part test, purposeful availment, has its own three part test:  “the defendant allegedly must have (1) committed an intentional act, which was (2) expressly aimed at the forum state, and (3) caused harm, the brunt of which is suffered and which the defendant knows is likely to be suffered in the forum state.”  (Order pdf page 6). 

The Ninth Circuit has approved a sliding scale analysis in addition to the effects test:  “[T]he likelihood that personal jurisdiction can be constitutionally exercised is directly proportionate to the nature and quality of commercial activity that an entity conducts over the Internet.”  (Order pdf page 6). 

The court ruled that the defendant retailers conduct with Washington involved the sale of a small number of non-infringing products and was “insufficient to show that they directed their activity towards Washington in a substantial way.”  (Order pdf page 7).  The retail defendants’ conduct was also found not to have been expressly aimed at the forum, as the retail defendants did not previously know of plaintiff’s existence, her dispute with SWS or her residence in Washington state.  The court granted the retail defendants’ motion to dismiss for lack of personal jurisdiction.

SWS argued that exercising personal jurisdiction over it would be unreasonable.  “Defendant must present a compelling case that the presence of some other considerations would render jurisdiction unreasonable.”  (Order pdf page 8).  The seven factors for determining reasonableness are:

  1. the extent of the defendants’ purposeful contacts;
  2. the burden on defendant of having to defend in Washington;
  3. the extent to which jurisdiction conflicts with the sovereignty of the defendant’s resident state;
  4. Washington’s interest in adjudicating the dispute;
  5. which forum is the most efficient for resolution of the dispute;
  6. plaintiff’s interest in choosing the Washington forum; and
  7. the existence of an alternative forum to adjudicate plaintiff’s claims.

The court discussed the factors one by one.  It found that factors one, three, four and six weigh in favor of the plaintiff and factors two, five and seven weigh in favor of the defendant.  SWS did not present a compelling case that jurisdiction in Washington State is unreasonable.  The court denied SWS’s request to dismiss for lack of personal jurisdiction.

Copyright.  The defendants questioned whether plaintiff’s works were copyrighted, but did not provide support for that argument.  Defendants next argued that plaintiff’s designs become a useful article when used with a paper punch.  However, the designs can be cut with scissors or drawn.  The court did not think they were useful articles.  Defendants also argued that plaintiff’s floral designs are scenes a faire, since their origins are objects of nature.  The court ruled that this doctrine is inapplicable, since plaintiff did not claim copyright protection for the shape of certain flowers, but only for the designs of those flowers as rendered in her books. 

Lanham Act claim.  Plaintiff argued that SWS’s products used a trade dress confusingly similar to her products, in violation of the Lanham Act, 15 U.S.C. §1125(a).  Defendants argued that plaintiff’s Lanham Act claims duplicated her copyright claims and failed as a matter of law.  The court stated that “parallel copyright and Lanham Act claims are not per se improper” and that courts limit the application of trademark law when copyright laws “provide an adequate remedy.”  (Order pdf page 12).  The court indicated that plaintiff’s Lanham Act claim includes other elements that are not necessarily compensable under copyright law, such as a false designation of origin and/or sponsorship and SWS passing off its products as plaintiff’s.  The court stated that “courts typically resolve the issue of whether the Lanham Act and copyright claims overlap at the summary judgment stage rather than on a motion to dismiss.”  (Order pdf page 13).  The court denied defendants’ motion to dismiss the Lanham Act claim.

State law claims.  The defendants argued that plaintiff’s state law claims are preempted by the Copyright Act.  Preemption was discussed in my May 10, 2011, post Ninth Circuit Upholds Script Writer’s Implied Contract Claim under California State Law.  The two part preemption test adopted by the Ninth Circuit is

  • courts must first determine whether the subject matter of the state law claim falls within the subject matter of copyright as described by 17 U.S.C. §§102 and 103, and
  • courts must determine whether the rights asserted under state law are equivalent to the rights contained in 17 U.S.C. §106.

To survive preemption, the state law claim must include an extra element that is not protected by the Copyright Act.  The court ruled that plaintiff’s Consumer Protection Act (CPA) claim does not include the required extra element and dismissed that claim as preempted.  Of note to attorneys practicing in the Western District of Washington, the court stated that

[P]laintiff’s response does not address her CPA claim, which the Court construes, pursuant to Local Rule 7, as a concession that defendants’ arguments regarding that claim have merit.

The court found that plaintiff’s Washington State trade dress claims are not preempted, for the same reason the Lanham Act claims are not preempted.

The court found that plaintiff’s state law trade name claim based on words used by plaintiff in her copyrighted works is preempted by copyright law. 

Plaintiff’s state law trade name claim based on the alleged misuse of her name by the defendants is not preempted by copyright law.  “A person’s name or likeness is not a work of authorship within the meaning of 17 U.S.C. §102.”  (Order pdf page 15).

Plaintiff’s state law constructive trust claim was dismissed as preempted, as it was based on defendants’ violation of plaintiff’s copyrights. 

This case is Susan Tierney Cockburn v. SWS Industries, Inc., et al., Case No. C10-1566 RSL, Western District of Washington at Seattle.

Copyright Infringement Suit Regarding Precast Concrete Vault Drawings Yields Summary Judgment Rulings

Western District of Washington Judge Marsha J. Pechman granted in part and denied in part Defendant’s motion for summary judgment, granted Plaintiff’s motion for summary judgment and granted Plaintiff’s motion to amend its complaint in Oldcastle Precast, Inc., v. Granite Precasting & Concrete, Inc. (pdf) on March 2, 2011.

Facts.  Plaintiff Oldcastle Precast, Inc. began manufacturing concrete precast vaults in the 1960s and is considered the leader in the precast concrete vault market.  Defendant Granite Precasting & Concrete, Inc. is a competitor.  In 2006, Plaintiff became aware that Defendant was using drawings similar to those created by Plaintiff.  Plaintiff notified Defendant of the alleged copying, the parties met and Defendant agreed to change 12 sets of its drawings.  Defendant did not sign Plaintiff’s proposed settlement agreement.  Plaintiff did not follow up.

Plaintiff monitored Defendant’s website from 2007 through 2009 and found the continued infringing use of only one product.  Plaintiff believed that Defendant complied with the agreement, except for that one product.  Sometime in mid-2007, Plaintiff became aware that Defendant did not change all of its drawing and product numbers.  In 2009, Defendant submitted a bid for a Seattle City Light project using drawings that Plaintiff believed infringed its copyright.  Plaintiff sued Defendant for copyright infringement on February 24, 2010.

Defendant filed a summary judgment motion, arguing that the statute of limitations had expired on Plaintiff’s copyright and trademark claims, that its state law breach of implied covenant claim was barred by the statute of frauds and that Plaintiff’s copyright and trademark claims failed on the merits.  Plaintiff filed a summary judgment motion, too, to dismiss Defendant’s copyright misuse counterclaim. 

Plaintiff also filed a motion to amend its complaint.  Plaintiff’s previous amended complaint alleged that Defendant downloaded Plaintiff’s drawings electronically and used those drawings to create its own infringing drawings.  Plaintiff’s drawings were registered with the Copyright Office.  Testimony from a September 2010 deposition led Plaintiff to believe that Defendant copied some much older drawings that Plaintiff’s predecessor produced and published and that Defendant obtained from Seattle City Light.  Plaintiff believed that those drawings were registered under the Copyright Act of 1909, not the Copyright Act of 1976. 

Plaintiff undertook a laborious process of inspecting company records for the earliest publication of the documents, preparing the renewal registration and supplementing its registration under the 1976 Act.  Plaintiff submitted its documents to the Copyright Office on November 22, 2010.  On December 9, 2010, the Copyright Office granted the renewal and supplemental registrations.  Plaintiff filed its motion for leave to amend its complaint on December 22, 2010.  Defendant moved for summary judgment on all of Plaintiff’s claims on December 16, 2010, the discovery cut-off was November 26, 2010, the dispositive motion deadline was December 27, 2010 and trial was set for April 25, 2011.

Defendant’s Motion for Summary Judgment.  The court will grant a motion for summary judgment “when the moving party has shown an entitlement to judgment as a matter of law and there is an absence of genuine issues of material fact.”  (Order pdf page 4).

Defendant moved for summary judgment on the following bases:

  • The statute of limitations on the copyright claim expired.
  • The statute of limitations on the Lanham Act (trademark) claim expired.
  • The state breach of implied covenant claim was barred by the statute of frauds.
  • Plaintiff’s works were not copyrightable.
  • The Lanham Act claim fails on the merits.

Copyright Act statute of limitations.  The court found that the three year copyright statute of limitations expired regarding one drawing, but that the Plaintiff could not have discovered the alleged infringements regarding the other drawings through diligent research in the three years prior to the date the complaint was filed.  The court granted Defendant’s motion for one drawing.

Lanham Act statute of limitations.  The court noted that there is no express statute of limitations in the Lanham Act and applied the statute of limitations for the closest analogy under Washington State law – the common law tort of trade name infringement.  The applicable statute of limitations was three years.  The court ruled that Plaintiff’s Lanham Act claims were barred by the statute of limitations for one drawing.

Statute of frauds.  The statute of frauds requires that “any contract that by its terms is not to be performed in one year from the making thereof must be in writing.”  (Order pdf page 8, citing RCW 19.36.010.)  The court ruled that since the contract could not be performed within one year but required Defendant’s forbearance from copying Plaintiff’s work forever, Plaintiff’s breach of implied covenant claim was barred by the statute of frauds.

Defendant argued that Plaintiff’s works were not copyrightable on the following theories:

  • The works are outside the scope of copyright protection.
  • There is insufficient substantial similarity between Defendant’s drawings and Plaintiff’s drawings to establish copyright infringement.
  • Plaintiff’s copyright protection is “thin” and therefore protects only against copies that are virtually identical.
  • The idea of precast concrete vault drawings merges with the expression.
  • Plaintiff’s drawings are scenes a faire (a standard feature).

Scope of protection.  The court ruled that technical drawings such as Plaintiff’s are expressly included as works covered by the Copyright Act.  17 USC §§ 101 and 102(a)(5).  The court also ruled that a technical drawing is not a “useful article” under the Copyright Act.  The technical drawing of a precast concrete vault, a useful article, was not itself a useful article.  Useful articles are not protected by copyright law.

Substantial similarity.  Plaintiff has the burden of showing 1) access to the copyrighted work and 2) substantial similarity between the copyrighted work and the infringing work.  “Substantial similarity” has both an extrinsic test and an intrinsic test.  The court rules only on the extrinsic test on summary judgment, as the intrinsic test is for the jury to determine at trial.  The court found “Plaintiff to have shown adequate articulable similarities between the expressive elements of the drawings to satisfy the extrinsic test.”  (Order pdf page 12). 

Thin copyright protection.  Defendant argued that there is only a limited range of ways to express the idea of a precast vault, requiring Plaintiff to show “virtual identity” between its drawings and Defendant’s.  The court found that Defendant did not present enough evidence on this point to prevail.  The court also stated that “there is nothing inherent in the notion of precast concrete vaults that limits their range of expression.”  (Order pdf page 13).

Merger doctrine.  “When an idea and its expression are indistinguishable, or ‘merged,’ the expression will only be protected against nearly identical copying…..Merger means there is practically only one way to express an idea.”  (Order pdf page 14).  The court ruled that evidence that Plaintiff’s vault drawings are the industry standard does not satisfy the merger doctrine.

Scenes a faire.  “Scenes a faire holds that when similar features in the item claimed to be copyrighted are as a practical matter indispensable, or at least standard, in the treatment of a given idea, they are treated like ideas and are therefore not protected by copyright.”  (Order pdf page 14).  The court ruled that the scenes a faire doctrine did not apply, as Plaintiff sought protection for only specific expressions of vaults, not for the expression of utility vaults in general.

Lanham Act claim merits.  Plaintiff claimed trade dress violations under 15 USC §1125(a)Trade dress is some physical aspect of the product that identifies it as coming from a particular source.  Plaintiff has the burden of proving “(1) that its claimed dress is nonfunctional; (2) that its claimed dress serves a source-identifying role either because it is inherently distinctive or has acquired secondary meaning; and (3) that the defendant’s product or service creates a likelihood of consumer confusion.” (Order pdf page 16).  The court granted Defendant’s motion for summary judgment on this claim, as Plaintiff did not argue the first two points and did not provide competent evidence on the third point.

Plaintiff’s Motion for Summary Judgment.  The court granted Plaintiff’s motion for summary judgment on Defendant’s copyright misuse counterclaim.  “The party pursuing a copyright misuse claim must prove that the holder of the copyright is using its monopoly secured by the copyright to extend to areas not covered by the copyright itself.”  (Order pdf page 18).  “[T]here must be facts tending to show efforts to expand and extend rights secured by the Copyright Act beyond their proper scope.”  (Order pdf page 19). 

The court ruled that Defendant did not articulate a public policy reason to invalidate Plaintiff’s copyright and that it did not provide sufficient facts to support its claim of copyright misuse.  The court rejected Plaintiff’s argument that copyright misuse is a defense and not a cause of action and that therefore it was improperly pled as a counterclaim.  Plaintiff’s argument that Defendant’s copyright misuse counterclaim was barred by the statute of limitations was also rejected by the court, as the claim was based on Plaintiff filing the lawsuit in 2010 and not on Plaintiff’s actions in 2006.  The court ruled that Defendant could reassert its copyright misuse counterclaim in response to Plaintiff’s second amended complaint.

Plaintiff’s Motion to Amend its Complaint.  The factors to consider in granting a motion to amend are “(1) undue delay, (2) bad faith, (3) futility in amendment and (4) prejudice to the non-moving party.” (Order pdf page 20).  The court granted Plaintiff’s motion to amend, as it did not find evidence to establish any of these factors.  The court ruled that the amendment focused only on clarifying what copyrights apply and how Defendant obtained the drawings.  Plaintiff’s timing in filing its motion was not undue delay.

Plaintiff’s motion for reconsideration on the breach of implied covenant claim was denied on April 11, 2011.

This case is Oldcastle Precast, Inc., v. Granite Precasting & Concrete, Inc., Case No. C10-322 MJP, Western District of Washington at Seattle.

Personal Jurisdiction Found Lacking in Copyright Infringement Action

Marylou Dantonio filed a complaint alleging copyright infringement (pdf) against Southwest Educational Development Laboratory (SEDL) and Jill Slack.  Western District of Washington Court Judge Robert S. Lasnik granted defendants’ Fed. R. Civ.P. 12(b)(2) motion to dismiss for lack of personal jurisdiction on May 26, 2011. 

Facts.  Plaintiff Dantonio is a Washington resident.  She is an education professor whose research topics include critical thinking and curriculum development.  In 1990, she wrote a book entitled “How Can We Create Thinkers: Questioning Strategies That Work For Teachers.”  SEDL is a Texas entity engaged in developing and disseminating education-related publications.  Slack is a Louisiana resident, a program director at the Louisiana State Department of Education and a former employee in SEDL’s Metairie, Louisiana office.  Slack took some courses from Dantonio at the University of New Orleans in 1991.  Dantonio later became Slack’s doctoral adviser.  Dantonio’s complaint alleges that SEDL and Slack infringed the copyright in her book by including content from her book in materials published or distributed by Slack and SEDL.  One of defendants’ alleged contacts with Washington State was a page on the Spokane School District website which displayed what Dantonio claimed was a SEDL document written by Slack.  Slack and SEDL denied knowing that Dantonio was a resident of Washington State at the time the alleged infringement occurred.

Legal Standard for Personal JurisdictionPersonal jurisdiction is the power of a court over the parties in a case and is generally limited to a geographical area, such as a state.  A long-arm statute gives a state court jurisdiction over an out-of-state defendant.  There is no applicable federal long-arm statute, so the court applied the Washington State long-arm statute, the state where plaintiff filed the lawsuit.  Since Washington State’s long-arm statute “extends jurisdiction to the limit of federal due process,” the court was not required to examine Washington law, but needed only to determine whether exercising jurisdiction conformed to federal constitutional requirements.  (Order pdf page 3).  Specific jurisdiction, which is “jurisdiction based on the relationship between the defendant’s forum contacts and plaintiff’s claims,” was at issue. (Order pdf page 3). General jurisdiction, which is jurisdiction based on the defendant’s substantial, continuous and systematic contacts with the forum and under which defendant can be considered “present” in the forum for all purposes, was not at issue.

Although the court must decide a motion to dismiss for lack of personal jurisdiction without the benefit of an evidentiary hearing, the plaintiff must do more than rely on allegations in the complaint and must present facts to support personal jurisdiction.

Specific Personal Jurisdiction.  Whether the exercise of specific personal jurisdiction conforms to due process standards is determined by a three-pronged test:

  • The non-resident defendant must purposefully direct his activities or consummate some transaction with the forum or resident thereof; or perform some act by which he purposefully avails himself of the privilege of conducting activities in the forum, thereby invoking the benefits and protections of its laws;
  • the claim must be one which arises out of or relates to the defendant’s forum-related activities; and
  • the exercise of jurisdiction must comport with fair play and substantial justice, i.e. it must be reasonable.

(Order pdf page 4).

The first prong of the above test, purposeful direction, has its own three prong test:  “whether the defendant (1) committed an intentional act, which was (2) expressly aimed at the forum state, and (3) caused harm, the brunt of which is suffered and which the defendant knows is likely to be suffered in the forum state.”  (Order pdf page 5). 

The court found that Dantonio alleged an intentional act.  Her complaint and other documentation did not satisfy the “express aiming” test.  That test requires that the defendant knows the plaintiff is a resident of the forum state.  SEDL and Slack presented evidence that they had no knowledge that Dantonio was a resident of Washington State at the time of the allegedly infringing activity. 

As an alternative to “express aiming,” Dantonio argued that SEDL posted the infringing materials on its website for distribution throughout the country.  The court applied a sliding scale analysis to this argument.

[T]he likelihood that personal jurisdiction can be constitutionally exercised is directly proportionate to the nature and quality of commercial activity that an entity conducts over the Internet.

(Order pdf pages 8-9).

The court indicated that under this approach, the plaintiff must show something more purposefully directed at the forum state than just posting on a website, such as running radio or print advertisements in the forum state.  The court did not think SEDL’s Internet contacts with Washington were sufficient to support specific personal jurisdiction over the defendants.

Under the foreseeable harm prong of purposeful direction, the court indicated that the plaintiff could not allege foreseeable harm without first establishing that defendants knew she resided in Washington.  Defendants could not foresee harm happening in Washington State unless they knew that was where the plaintiff lived.

The second prong of the overall specific personal jurisdiction test is that the plaintiff’s claim must arise out of the defendants’ forum-related activities.  A direct causal relationship is required so that plaintiff’s claim would not have arisen “but for” defendant’s contacts with the forum state.  Plaintiff was not able to establish this “but-for” relationship between her claim and the defendants’ activities in Washington State.

The third prong of the overall specific personal jurisdiction test is that the exercise of jurisdiction must be reasonable.  Reasonableness is determined by the following seven factors:

  1. the extent of the defendants’ purposeful interjection into the forum state’s affairs;
  2. the burden on the defendant of defending in the forum;
  3. the extent of conflict with the sovereignty of the defendants’ state;
  4. the forum state’s interest in adjudicating the dispute;
  5. the most efficient judicial resolution of the controversy;
  6. the importance of the forum to the plaintiff’s interest in convenient and effective relief; and
  7. the existence of an alternative forum.

(Order pdf page 11).

The court discussed these factors one by one.  It found that the first, second, and seventh factors weigh in favor of the defendants, that the third and fifth factors are neutral and that the fourth and sixth factors weigh in favor of the plaintiff.  In balancing the factors, the court stated that “plaintiff has failed to demonstrate that exercising personal jurisdiction over SEDL and Dr. Slack is entirely reasonable.”  (Order pdf page 14).

The court also rejected plaintiff’s argument for personal jurisdiction under a stream of commerce theory.  “Under the stream of commerce test, the Court may assert jurisdiction where a defendant delivers its products into the stream of commerce with the expectation that they will reach the forum state.”  (Order pdf page 14).  The court found that the most that plaintiff could show was that the allegedly infringing materials somehow ended up in Washington State. 

The court denied Slack’s motion for attorney’s fees.  An award of attorney’s fees is discretionary under the Washington State long-arm statute.  The court indicated that the purpose of the attorney’s fees provision under the statute is to balance compensating out-of-state defendants with promoting the full exercise of state jurisdiction.  The court found that plaintiff’s “jurisdictional arguments were neither frivolous nor completely incapable of substantiation.”  (Order pdf page 16). 

The court dismissed plaintiff’s action without prejudice to allow her to refile in another jurisdiction in which personal jurisdiction over the defendants could be established.

This case is Marylou Dantonio v. Southwest Educational Development Laboratory (SEDL); and Jill Slack, Case No. C10-1193RSL, Western District of Washington at Seattle.