Lang v. Morris

In copyright infringement action, court grants out-of-state defendant’s motion to dismiss for lack of personal jurisdiction, rejecting plaintiffs’ argument that an allegation of copyright infringement with knowledge that the plaintiff resides in the forum is sufficient, on its own, to establish the “express aiming” prong of jurisdictional analysis.

Plaintiffs are owners of several copyrights in origami designs. Defendant is an artist who created a series of paintings depicting origami designs. The plaintiffs filed suit against the defendant in federal district court in California alleging copyright infringement. The defendant, who resides in New York, moved to dismiss for lack of specific personal jurisdiction.

The Ninth Circuit has established a three-prong test for analyzing a claim of specific jurisdiction: (1) the non-resident defendant must purposefully direct activities or consummate some transaction with the forum or resident thereof; or perform some act which he purposefully avails himself of the privilege of conducting activities in the forum, thereby invoking the benefits and protection 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. Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 802 (9th Cir. 2004).

The defendant argued that the court did not have specific personal jurisdiction over her because she has no contacts with the state of California: she resides in New York, she has not sold any allegedly infringing works in California, and she does not have a gallery, agent or representative in California. Plaintiffs asserted that defendant targeted Lang, a California resident, and willfully infringed his copyrighted works with knowledge that he was in California. Defendant denies knowing that Lang was a Californian.

Under the first prong of the test, plaintiffs must establish that defendant either purposefully availed herself of the privilege of conducting activities in California, or purposefully directed her activities toward California. In this case, the court held that the intentional act requirement “is easily satisfied as defendant committed an intentional act when she created paintings that allegedly infringe plaintiffs’ copyrights.”

The second prong is whether defendant expressly aimed her conduct at the forum state. The Ninth Circuit has explained that “something more” than mere foreseeability is required in order to justify the assertion of personal jurisdiction, and that “something more” is what the Supreme Court described as “express aiming” at the forum state. See Bancroft & Masters, Inc. v. Augusta National, Inc., 223 F.3d 1082, 1087 (9th Cir. 2000).

In copyright infringement cases, some courts have interpreted Ninth Circuit precedent to find that the express aiming requirement is satisfied when the defendant is being sued for copyright infringement, the plaintiff brings suit in the forum where plaintiff resides, and the defendant knows that the plaintiff resides there. See Righthaven LLC v. South Coast Partners, Inc., 2011 U.S. Dist. LEXIS 12802 (D. Nev. Feb. 8, 2011). However, according to the court, recent Ninth Circuit decisions “make clear that an allegation of copyright infringement with knowledge that the plaintiff resides in the forum is insufficient, on its own, to establish express aiming.” The court explained that the focus is not on the place of the defendant’s residence, but the location of the competition targeted by the plaintiff.

In this case, the court held that the plaintiffs met their burden of showing that the defendant knew Lang was a Californian – the defendant visited Lang’s website which states Lang lives in California, and the defendant read an article in The New Yorker which disclosed that Lang is a Californian. However, the court concluded that the plaintiffs failed to show that the defendant individually targeted or competed with Lang in California.

The court rejected the plaintiffs’ request that it adopt a unique standard for copyright infringement cases. “Plaintiffs argue that Defendant has individually targeted Lang in California by virtue of the fact that she (allegedly) willfully infringed his works. At oral argument, they also claimed that there is a distinct analysis for copyright infringement as opposed to other causes of action due to the unique bundle of rights held by a copyright owner. The Court does not discern such a distinction in the law, as the Ninth Circuit has analyzed copyright infringement cases such as Brayton Purcell and Mavrix under the same standards and lines of cases as other similar causes of action. . . . Moreover, Plaintiffs' requested standard is not consistent with the Ninth Circuit's recent case law in copyright infringement cases.”

The court held that the plaintiffs failed to allege that the defendant marketed or promoted any of the allegedly infringing works in California. The defendant stated that the only authorized source of her works in the U.S. is the Friedrich Petzel Gallery in New York, and that none of the allegedly infringing works was sold or consigned for sale in California by her or her agent. The court also rejected plaintiffs’ argument that the express aiming prong was satisfied because defendant’s works are available for sale on a gallery website: according to the court, the plaintiffs failed to show that the website is more than a passive website and “maintenance of a passive website alone cannot satisfy the express aiming prong.”

The court also held that the defendant’s activities fail the second prong – that the claims arise out of defendant’s forum related activities. “Thus plaintiffs’ allegations of defendant’s contacts with California either do not relate to the Infringing Works or are not attributable to defendant herself.” The court granted defendant’s motion to dismiss for lack of personal jurisdiction and the court declined to permit jurisdictional discovery.