Personal Jurisdiction for Internet Copyright Infringement Clarified

May the federal district court in Washington State exercise personal jurisdiction over an accused copyright infringer who lives in New York state for infringing content posted on the accused infringer’s website?  No, according to Judge Robert S. Lasnik of the Western District of Washington in Seattle.

Larry G. Johnson is an attorney in Washington State and the sole copyright owner of The Deposition Guide, A Practical Handbook for Witnesses.  Catharine M. Venzon is an attorney in New York state.  Venzon’s law firm posted scanned pages from Johnson’s book on its website.  Johnson sued Venzon and her law firm for copyright infringement in federal court in Washington State.  Venzon brought a motion to dismiss for lack of personal jurisdiction.  The district court granted the motion, focusing on whether Venzon’s conduct was expressly aimed at Washington State.

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South Park WWITB Video Fair Use, Rules Seventh Circuit

Was South Park’s video version of What What (In The Butt) a fair use of Brownmark’s original viral video version of What What (In The Butt)?  The district court thought so.  It made its decision based on South Park Digital Studios’ (SPDS) Fed.R.Civ.P. 12(b)(6) motion, comparing the two videos without considering other evidence.  Brownmark appealed to the Seventh Circuit Court of Appeals, arguing that the district court could not base its decision in a Rule 12(b)(6) motion on an affirmative defense. 

In a Rule 12(b)(6) motion, the defendant argues that the plaintiff failed to state a claim upon which relief can be granted.  Fair use (17 U.S.C. §107) is an affirmative defense, meaning that establishing the defense nullifies a claim of copyright infringement.  Brownmark argued that it is improper procedure for a district court to consider the defendant’s affirmative defense in a motion addressing the sufficiency of the plaintiff’s complaint.  The Seventh Circuit affirmed the district court’s ruling on both the procedural issue and the fair use issue, stating that the South Park video “is clearly a parody of the original WWITB video, providing commentary on the ridiculousness of the original video and the viral nature of certain YouTube videos.”  (Opinion pdf page 10).

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Domain Tools Seeks Declaratory Relief in Copyright and Trademark Dispute

This is a summary of the allegations in Domain Tools’ complaintDomain Tools, LLC is a King County-based company offering online domain name research and monitoring services.  Domain Tools’ services include domain name research, registration research, WHOIS information, historical WHOIS information and historical static screenshots of the home pages of websites that have been associated with specific domain names.  WHOIS information is the contact information that everyone who registers a domain name must provide, as per ICANN requirements.  ICANN is the Internet Corporation for Assigned Names and Numbers and is the entity that controls the domain name system. 

The historical screenshots provided by Domain Tools are not interactive and do not substitute for live websites.  Domain Tools believes that by providing access to historical information about the Internet, it provides a service that benefits the public.  The DOMAINTOOLS trademark is registered on the U.S. Patent and Trademark Office (USPTO) Principal Register, which means that it is a distinctive trademark.  Domain Tools, LLC is the exclusive licensee of the mark. 

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Multimillion Dollar Trademark Jury Award Upheld by the Ninth Circuit

Skydive Arizona sued defendants collectively doing business as SKYRIDE, alleging trademark claims of false advertising, trademark infringement and cybersquatting.  The district court granted partial summary judgment in Skydive Arizona’s favor on the false advertising claim.  The jury awarded damages to Skydive Arizona:  $1 million for willful false advertising, $2.5 million for willful trademark infringement, $2,500,004 for lost profits and $600,000 statutory damages for six violating domain names.  The district court doubled the false advertising and trademark infringement awards.  SKYRIDE appealed the judgment against it to the Ninth Circuit Court of Appeals.  Skydive Arizona appealed the district court’s grant of an injunction against SKYRIDE limited to Arizona, instead of a nationwide injunction.

Skydive Arizona is one of world’s most well known skydiving centers.  It hosts 145,000 to 160,000 skydives within Arizona each year and provides planes and personnel for skydiving events in 30 other states.  SKYRIDE is a third-party advertising and booking service for skydiving centers, but does not own skydiving facilities.  Customers pay SKYRIDE for a certificate that can be redeemed at drop zones across the country.  SKYRIDE owned and operated a number of website referencing locations in Arizona, such as PhoenixSkydiving and TucsonSkydiving, as well as domain names such as skydivearizona.net.  Both Skydive Arizona and SKYRIDE promote their businesses extensively on the Internet.

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Corporate Officer Found Liable for Copyright Infringement in Online Copying Case

This case discusses the potential liability of a corporate officer for the infringing acts of the corporation.  Defendant Larry Chasin, CEO of the corporate defendant IDS, filed a motion for summary judgment against Plaintiff Blue Nile.  Blue Nile filed a cross motion for summary judgment against defendant Chasin on the issue of Chasin’s liability for copyright infringement.  Judge Thomas S. Zilly, Western District of Washington, Seattle, denied Chasin’s motion for summary judgment and granted Blue Nile’s motion for summary judgment, finding Chasin liable for copyright infringement (pdf).

Facts

Blue Nile, Inc. is an online jewelry and diamond retailer.  It alleged that defendants Ideal Diamond Solutions, Inc. (IDS) and Larry Chasin infringed its copyrights by posting Blue Nile’s copyrighted images of diamonds and jewelry on websites owned and operated by IDS and Chasin.

Chasin created IDS to provide brick and mortar jewelry retailers with web services to enable them to compete online.  The court determined from declarations and the parties’ moving papers that IDS was the “brainchild” of the defendant Chasin, that it is a small company and that defendant Chasin controlled the company’s corporate affairs.

Chasin did not dispute the allegations of infringement in Blue Nile’s moving papers.  The bases for Chasin’s motion for summary judgment and his defense to Blue Nile’s motion were “1) he cannot be held liable for copyright infringement because he had no role in creating the infringing websites and no knowledge that content used on the websites was copyrighted by Blue Nile; and 2) he cannot be held liable for IDS’s alleged infringement.”  (Opinion pdf pages 2-3).

The court found that Chasin was mistaken as a matter of law and that no genuine issue of material fact existed and therefore granted Blue Nile’s motion and denied Chasin’s motion.  (Opinion pdf page 3).  The court did not rule on whether IDS infringed Blue Nile’s copyrights, but the order is written on the assumption that IDS did infringe.

Summary Judgment

Summary judgment shall be granted if no genuine issue of material fact exists and the moving party is entitled to judgment as a matter of law.  Fed.R.Civ.P. 56(c).

(Opinion pdf page 3). 

The non-moving party must demonstrate that there is a genuine issue of material fact for trial by identifying “specific facts” to establish a genuine issue.

This blog also discusses the standard for granting summary judgment in Ninth Circuit Upholds Ruling that Sony’s God of War Video Game Not Infringing in Dath v. Sony, Photograph of Model Dancing Copyrighted Bronze Dance Steps Could be Fair Use and Copyright Infringement Suit Regarding Precast Concrete Vault Drawings Yields Summary Judgment Rulings.

Personal Liability for Copyright Infringement

Copyright is a strict liability tort; therefore there is no corporate veil and all individuals who participate are jointly and severally liable.

(Opinion pdf page 4.)

Corporate officers are liable as joint tortfeasors with the corporation when the corporate officer is the dominant influence in the corporation and determines the policies that produce the copyright infringement.

Because Chasin controlled the corporation, his argument that he did not create the infringing websites or know that infringing material was posted was not a defense.  The court stated that

[t]he Copyright Act is a strict liability regime under which any infringer, whether innocent or intentional, is liable.

(Opinion pdf page 5).

The court also indicated that there is a genuine question of material fact regarding whether Chasin is an “innocent infringer.”  Innocent infringement is discussed in my post Fair Use in AP Fairey Dispute but not in Cooks Source Magazine Controversy.  The distinction between an innocent infringer and an intentional infringer is important in calculating damages under the Copyright Act.  17 U.S.C. §504(c)(2).  Regarding innocent infringement, §504(c)(2) states:

In a case where the infringer sustains the burden of proving, and the court finds, that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court in its discretion may reduce the award of statutory damages…

Vicarious Liability for Copyright Infringement

The court ruled that Chasin is alternatively “liable for vicarious copyright infringement because he had the right and ability to supervise the infringing activity and also had a direct financial interest in such activities.”  (Opinion pdf page 5).  Chasin admitted that he had the ability to remove infringing content, that he controlled corporate affairs, that he invested his own money in IDS and that he received a salary and benefits from IDS.

Vicarious liability is also discussed on this blog in Game Developer Alleges Copyright and Computer Fraud and Abuse Act Violations in Suit Against Unknown Defendants.

This case is Blue Nile, Inc. v. Ideal Diamond Solutions, Inc., et al., No. C10-380Z, Western District of Washington at Seattle.

Perfect 10 Denied Preliminary Injunction Against Google, Affirmed by Ninth Circuit

Perfect 10 has a long history of legal action against Google.  The Ninth Circuit does not recount that history in its most recent opinion, but refers the reader to Perfect 10 II, 508 F.3d 1146.

Perfect 10 makes its copyrighted photographic images of nude models available for viewing on a password-protected, paid-subscription website.  These copyrighted images produce essentially all of Perfect 10’s income.   Perfect 10 opposes the display of thumbnail versions of its images by Google’s search engines.  This appeal arises out of Perfect 10’s motion for a preliminary injunction following the Ninth Circuit’s remand in Perfect 10 II.

Perfect 10 argued that it was entitled to an injunction because Google’s web and image search and related caching feature, its Blogger service, and its practice of forwarding Perfect 10’s takedown notices to chillingeffects.org constituted copyright infringement.

(Opinion pdf page 4).

The district court denied Perfect 10’s motion for a preliminary injunction.  The Ninth Circuit first discussed the applicable standard for issuing a preliminary injunction in copyright cases.  It then discussed whether Perfect 10 established that it was likely to suffer from irreparable harm if the injunction did not issue.

Preliminary injunction.

A plaintiff seeking a preliminary injunction must establish (1) that he is likely to succeed on the merits, (2) that he is likely to suffer irreparable harm in the absence of preliminary relief, (3) that the balance of equities tips in his favor, and (4) that an injunction is in the public interest.

(Opinion pdf page 5).

Perfect 10 argued that since it made a strong showing that it was likely to succeed on the merits of its copyright claims, the district court was required to presume that it would suffer irreparable harm and grant the motion for an injunction.  In other words, because Perfect 10 believed that it established it was likely to establish copyright infringement, the district court should automatically issue the injunction.

The Ninth Circuit discussed how even though there is support for Perfect 10’s argument in previous Ninth Circuit decisions, the standard articulated by Perfect 10 is not the law.  In eBay Inc. v. MercExchange, L.L.C., the U.S Supreme Court indicated that the permissive language in the Copyright Act regarding injunctive relief did not demonstrate a congressional intent to depart from traditional equitable principles in granting an injunction in a copyright case and that, therefore, an injunction should not automatically follow a determination of copyright infringement.  Prior to the Supreme Court’s ruling in eBay, federal district courts routinely granted injunctions to prevailing rights holders in both patent and copyright cases.

The Ninth Circuit rejected Perfect 10’s argument for an automatic injunction and ruled that “the propriety of injunctive relief in cases arising under the Copyright Act must be evaluated on a case-by-case basis in accord with traditional equitable principles and without the aid of presumptions” that favor issuing the injunction.  (Opinion pdf page 8).

Although the injunction at issue in eBay was a permanent injunction, not a preliminary injunction such as Perfect 10 requested, the Ninth Circuit determined that the standard is essentially the same.

Irreparable harm

The district court ruled that Perfect 10 failed to establish that it would suffer irreparable harm if the preliminary injunction did not issue.  The Ninth Circuit held that “Perfect 10 has not shown a sufficient causal connection between irreparable harm to Perfect 10’s business and Google’s operation of its search engine.”  (Opinion pdf page 11).  To support its conclusion, the Ninth Circuit pointed to the failure of Perfect 10 to establish that the business was ever financially sound, the free access of Perfect 10 images on other search engines and the failure of Perfect 10 to identify even one former subscriber who stopped paying for the service due to the availability of the images on Google for free.

This opinion is Perfect 10, Inc. v. Google, Inc., No. 10-56316.

Ninth Circuit Upholds Ruling that Sony’s God of War Video Game Not Infringing in Dath v. Sony

On July 29, 2011, the Ninth Circuit filed what must be one of its shortest opinions in a copyright case:

We adopt and affirm the district court’s well-reasoned opinion in Bissoon-Dath v. Sony Computer Entm’t Am., Inc., 694 F. Supp.2d 1071 (N.D. Cal. 2010).

Dath v. Sony Computer Entertainment, No. 10-15783.

Facts.

The Plaintiffs Jonathan Bissoon-Dath and Jennifer B. Dath alleged that Sony Computer Entertainment of America, Inc., and one of Sony’s former employees infringed their copyrights in five works with the God of War video game, developed by Sony for its PlayStation 2 and PlayStation Portable video game consoles.  Plaintiffs wrote five works describing the story of Spartan kings at war against Athens, the involvement of the Greek Gods, how the Gods choose a mortal to achieve peace and how the mortal eventually secures peace and democracy in Greece.  Plaintiffs started distributing their works in early 2002.

Sony’s God of War video game also involves the tale of war between Sparta and Athens, but the mortal chosen by the Greek God Athena to end the war later becomes the Greek God of War, overseeing modern wars such as World War II and the Vietnam War.  Sony released the game in March 2005.

Plaintiffs filed this case in February 2008.  After the parties were unable to resolve the case through alternative dispute resolution, the defendants filed a motion for summary judgment.

The decision on summary judgment.

Summary judgment is a pretrial motion to decide the case on its merits without a trial.  The case is decided as a matter of law, relying on the evidence obtained by the parties as of the time the motion is made.  See my posts Photograph of Model Dancing Copyrighted Bronze Dance Steps Could be Fair Use and Copyright Infringement Suit Regarding Precast Concrete Vault Drawings Yields Summary Judgment Rulings for more detailed discussions of the requirements.  Those posts also discuss substantial similarity and scenes a faire, concepts relevant to this case.

Although summary judgment is not highly favored on questions of substantial similarity in copyright cases, summary judgment is appropriate if the court can conclude, after viewing the evidence and drawing inferences in a manner most favorable to the non-moving party, that no reasonable juror could find substantial similarity of ideas and expression.

(District court opinion page 1078).

The “substantial similarity” referred to by the court in the quote above is an aspect of the test used by the court to determine copyright infringement.  The plaintiff must prove that 1) she owns a valid copyright in the work and 2) “the defendant copied protected elements of that work.”  (District court opinion page 1078).  In this case, the defendants did not dispute the validity of the plaintiffs’ copyrights.  The issue on summary judgment was whether plaintiffs could establish that defendants copied the protectable elements of their works.

A plaintiff may establish copying either (1) by presenting direct evidence of copying or (2) by showing that the defendant had access to the work and that the works at issue are substantially similar.

The plaintiffs did not present direct evidence of copying and relied on showing access and substantial similarity.  The Ninth Circuit recognizes a relationship between access and substantial similarity with its “inverse ratio rule.”  When there is a high degree of access, a lower standard of proof of substantial similarity is required. 

The “substantial similarity” element includes a two-part test of its own:  1.  The extrinsic test is an objective test which examines whether “there are substantial similarities in both ideas and expression.”  (District court opinion page 1079).  2.  The intrinsic test is a subjective inquiry into the similarity of expression and is a test for the jury to apply.  The court considers only the extrinsic test on summary judgment.

Copyright law only prohibits copying of the protectable elements of a plaintiff’s work.  Ideas are not protected, but the expression of those ideas is.  General plot ideas and scenes a faire,stock scenes, are also not protected.  A particular sequence of a significant number of unprotectable elements may itself be a protectable element.  The court determines what the protectable elements are and disregards the non-protectable elements.

The court ruled that “no reasonable juror could find substantial similarity of ideas and expression, even if access to all of plaintiffs’ works were proven.”  The court examined the protectability of plaintiffs’ works and the articulable similarities between the works, using the following elements:

  • Plot
  • Themes
  • Dialogue
  • Mood
  • Settings 
  • Pace
  • Characters
  • Sequence of Events

Plot.  The court found similarities between the two plots, but stated that “[o]nce the unprotectable elements are filtered, the two stories’ plots are similar only at a level of abstraction that is barely meaningful, if at all.”  (District court opinion page 1082).

Themes.  The court found that the themes are quite different.  Plaintiffs’ works focus on the establishment of peace and democracy, while God of War focuses on violence, divine forgiveness and continued war.

Dialogue.  The court found that the dialogue similarities either referred to different things in the plaintiffs’ works and God of Waror were clichéd and unprotectable.

Mood.  The court found the mood for plaintiff’s works to be light-hearted, with some darker scenes sprinkled in for contrast and the mood of God of War to be dark and extremely violent.

Settings.  The court found that the shared settings of Greece, Athens, Mount Olympus, Sparta and the Underworld were generic and clichéd and unprotectable elements of stories concerning ancient Greece and Greek gods.

Pace.  The court found that plaintiffs’ works are relatively fast-paced and that God of War is very fast paced, but that the pace of the game is indicative of a violent video game and not of copying plaintiffs’ works.  In addition, the storyline in plaintiffs’ works is linear, whereas in God of War it is repeatedly interrupted with flashbacks.

Characters.  “Greek gods, dialogues among them about mortal affairs, rivalries among the gods, and mythical beasts such as the Hydra or the Nemean Lion are unprotectable elements; it is uncontroversial that they have been used widely in both ancient and modern artistic works, in the naming of astronomical bodies and spacecraft, and in other fields.”  (District court opinion page 1088).

Sequence of Events.  As indicated under the Pace element, the plaintiff’s storyline is linear, with scenes occurring in chronological order, while the scenes in God of War jump around through flash-backs.

In summing up, the court indicated that plaintiffs’ works were comprised of stock elements used in literary and artistic works for a long time.  Even though a particular sequence of stock elements can be protectable, in this case, the sequences of elements and relationships between the elements in the two works were entirely dissimilar.

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.