Decision expands jurisdiction over infringers in copyright cases filed in the Ninth Circuit
A divided panel of the Ninth Circuit just made it easier to establish jurisdiction over out-of-state operators of websites in copyright infringement cases. Although technically a venue case, as Circuit Judge Stephen Reinhardt wrote in his dissent, the majority’s holding in Brayton Purcell LLP v. Recordon & Recordon, 2009 U.S. App. LEXIS 17389 (9th Cir., August 5, 2009) exposes the operator of every website to the possibility of being “hailed into far-away courts” for infringement “if he happens to know where the alleged owner of the property rights resides.”
Brayton Purcell is a law firm based in Novato, California, just North of San Francisco. While known in the Bay Area primarily for its personal injury practice in asbestos cases, according to the court, Brayton Purcell also markets itself as a leader in elder abuse law with a practice throughout California. It also maintains a copyrighted website containing information about its elder law practice.
Recordon is a two-member law firm based in San Diego, California. In 2004, it hired a web design company to add an elder abuse section to its website. According to the court, Recordon’s website “consisted entirely of material copied verbatim from, and without attribution to, Brayton Purcell’s own website.” When Brayton Purcell discovered Recordon’s unauthorized use of its copyrighted material, it sued Recordon in the Northern District of California for copyright infringement, unfair competition, false advertising, and common law misappropriation.
Recordon moved to dismiss on various grounds, including improper venue. Northern District Magistrate Judge Edward Chen—who has since been nominated to be a District Court Judge—rejected Recordon’s claim that the suit was improperly brought in the Northern District.
In so doing, Magistrate Chen distinguished the Ninth Circuit decision in Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797 (9th Cir. 2004). Although the case was ultimately resolved in a binding arbitration, Recordon chose (unwisely as it turns out) to appeal Magistrate Judge Chen’s order denying its motion to dismiss. Writing for the majority, Circuit Judge Dorothy Nelson affirmed.
Although technically a venue case, the holding in Brayton Purcell will likely have broad implications in copyright infringement cases where personal jurisdiction over the defendant is also an issue. Venue in copyright cases is proper where “the defendant or his agent resides or may be found.” 28 U.S.C. § 1400(a). The Ninth Circuit interprets this provision to allow venue in any judicial district where the defendant would be subject to personal jurisdiction.
An operator of a website, even a “passive” one, can be sued in a district if it (1) commits an intentional act, (2) expressly aimed at the forum state, (3) causing harm that that the defendant knew was likely to be suffered in the district. Calder v. Jones, 465 U.S. 783 (1984). A party expressly aims at a district when it purposefully directs or targets its activity in a substantial way to the forum state. This second prong of the “Calder-effects” test split the Brayton Purcell court.
Judge Nelson (joined by Circuit Judge Mary Schroeder) held that it was uncontroverted that “Recordon individually targeted Brayton Purcell, a Forum resident” by making “commercial use of Brayton Purcell’s copyrighted material for the purpose of competing with Brayton Purcell for elder abuse clients.” The fact that Recordon’s prospective clients all resided outside of the forum (in San Diego) was irrelevant because Recordon “individually targeted Brayton Purcell, a Forum resident.”
Dissenting, Judge Stephen Reinhardt believed that Recordon’s conduct was not “expressly aimed” at the Northern District where Brayton Purcell’s offices were located. He instead believed the case was more akin to Schwarzenegger and another more recent decision, Pebble Beach Co. v. Caddy, 453 F.3d 1151 (9th Cir. 2006), which coincidentally was authored by none other than Judge Schroeder, who joined in Judge Nelson’s majority opinion. In Schwarzenegger, the Ninth Circuit held that an Ohio car dealership that used Arnold Schwarzenegger’s Terminator image in a newspaper advertisement could not be sued in California federal court because the advertisement was aimed at Ohio, not California. In Pebble Beach, the court similarly held that the famous golf resort could not sue a resident of England in California federal court based on his internet advertisements for his “Pebble Beach” bed-and-breakfast. Judge Reinhardt suggested that “the majority opinion would permit a defendant who resides in Ohio, Florida, or Maine, thousands of miles from the Ninth Circuit, to be sued in the Ninth Circuit based on nothing more than his knowledge that the plaintiff whose intellectual rights he allegedly infringed resides in San Francisco.”
The key fact that distinguishes Brayton Purcell from Schwarzenegger and Pebble Beach is that Brayton Purcell alleged, and Recordon did not dispute, that Recordon targeted Brayton Purcell by making commercial use of Brayton Purcell’s material for the purpose of competing with it.However, such a claim likely can be made (or at least alleged on information and belief) in any copyright infringement case between competitors where access to the copyrighted work needs to be proven anyway.