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.

When there is no applicable federal statute controlling personal jurisdiction, federal courts apply the law of the state in which the federal district court is located.  Washington State’s long-arm statute, RCW 4.28.185, “extends jurisdiction to the limits of federal due process.”  (Opinion pdf page 2). 

Specific jurisdiction is based on the relationship between the defendant’s forum contacts and the plaintiff’s claims.  See my post Personal Jurisdiction Found Lacking in Copyright Infringement Action for additional information on jurisdiction over out-of-state defendants.  Specific jurisdiction exists only when the defendant has “minimum contacts with the forum state such that the assertion of jurisdiction does not offend traditional notions of fair play and substantial justice.”  (Opinion pdf page 3). 

The Ninth Circuit articulates this minimum contacts test as follows:

  1. the defendant has performed some act or consummated some transaction within the forum or otherwise purposefully availed himself of the privileges of conducting activities in the forum,
  2. the claim arises out of or results from the defendant’s forum-related activities, and
  3. the exercise of jurisdiction is reasonable.

(Opinion pdf page 3).

The plaintiff must satisfy the first two prongs of the test.  If the plaintiff succeeds, the defendant must show that exercising jurisdiction would be unreasonable.

A plaintiff can meet the first prong of the minimum contacts test by showing either purposeful availment or purposeful direction.  Johnson relied on purposeful direction.  Establishing purposeful direction itself requires meeting three tests:

  1. each defendant committed an intentional act,
  2. expressly aimed at the forum state,
  3. causing harm that the defendant knows is likely to be suffered in the forum state.

(Opinion pdf page 4).

The “express aiming” requirement was the only one that caused the district court concern.  Express aiming in a copyright case requires the plaintiff to show 1) that the defendant knew he was a resident of the forum state and 2) that “defendants’ conduct was expressly aimed at the forum.”  (Opinion pdf page 4). 

The district court determined that Venzon’s acts in posting parts of Johnson’s book on her website and the acts of her law firm were intentional.  The district court also determined that Venzon knew that Johnson was a resident of Washington State while she was engaged in the allegedly infringing activities.  The district court turned its attention to the “express aiming” requirement.

Although some Ninth Circuit cases supported Johnson’s argument that “the express aiming requirement is satisfied when the defendant is alleged to have engaged in wrongful conduct targeted at a plaintiff whom the defendant knows to be a resident of the forum state,” the district court determined that “something more” than just knowledge that the copyright owner resides in the forum state is necessary.  A defendant’s Internet advertising, by itself, is not sufficient to establish jurisdiction over the advertiser in the copyright owner’s home state.

Later cases have similarly required ‘something more’ than mere knowledge.  More directly pertinent here, they have held that the ‘expressly aimed’ prong of the purposeful direction test can be met where a plaintiff alleges that the defendant individually targeted him by misusing his intellectual property on the defendant’s website for the purpose of competing with the plaintiff in the forum.

(Opinion pdf page 6).

The district court ruled that Johnson’s allegations did not provide the “something more” necessary to fulfill the express aiming requirement.  The district court found that Venzon and her law firm did not attempt to achieve a substantial viewer base in Washington State and did not attempt to compete with Johnson in the Washington State market.  Neither Venzon nor the other attorneys in her firm is licensed to practice law in Washington State.  Venzon’s firm sought business within the New York area.

In short, the Court thinks it clear that Defendants’ web site is aimed locally even though, like nearly every other web site, it is nationally and internationally accessible.

(Opinion pdf page 8).

Venzon and her firm sought attorney’s fees under RCW 4.28.185(5).  The district court found that Venzon was entitled to attorney’s fees under the statute, but denied the request.  The statute makes the award of attorney’s fees discretionary.  The purpose of the statute is to compensate out-of-state defendants from having to defend against frivolous or overly burdensome actions.  The district court found that Johnson’s suit against Venzon was “far from frivolous” and that the personal jurisdiction issue is both complicated and close.

This case is Johnson v. Venzon, No. C12-895RSL, Western District of Washington, Seattle.

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