284 F. Supp. 3d 547
S.D. Ill.2018Background
- Plaintiff DigitAlb, an Albanian corporation, licenses exclusive rights to distribute Albanian-language IPTV programming (U.S., EU, U.K., other European countries) and sues Setplex (a U.S. distributor) and related defendants for pirating and retransmitting that content to subscribers.
- DigitAlb's First Amended Complaint asserts direct and contributory U.S. copyright infringement (Counts I–II), foreign copyright infringement in multiple European countries (Count IV), Lanham Act false designation/dilution (Count VI), communications piracy, and breach of contract (Count V) arising from a license assignment.
- DigitAlb did not plead U.S. copyright registrations for the works at issue and did not allege with sufficient detail that the works are non‑U.S. works exempt from 17 U.S.C. § 411 registration requirements.
- DigitAlb alleges channel logos/symbols used in broadcasts and online; it claims dilution but pleads only niche fame (Albanian‑language audience) rather than fame to the U.S. general consuming public.
- Procedurally, Setplex moved to dismiss under Rule 12(b)(6) (U.S. claims and dilution), Rule 12(b)(3) forum non conveniens (foreign copyright claims), and alternatively for declination of supplemental jurisdiction; the court considered subject matter jurisdiction over the breach of contract claim deficiently pleaded.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether DigitAlb adequately pleaded direct copyright infringement in U.S. (§ 411 preregistration) | Works were created and first aired outside U.S.; registration not required | Plaintiff failed to plead registrations or allege that works are non‑U.S. works exempt from § 411 | Dismissed with prejudice: § 411 not satisfied and plaintiff failed to plead exemption; no leave to amend |
| Whether contributory copyright claim survives without § 411 compliance | Contributory theory independent of registration requirement | § 411 is a precondition to suit for these works | Dismissed with prejudice: same § 411 defect as direct claim |
| Whether Lanham Act dilution claim pleaded fame sufficient under TDRA | Symbols are widely recognized by U.S. public (alleged) | Marks are only niche‑famous to Albanian audience, not U.S. general public | Dismissed without prejudice: allegations fail to show fame to the U.S. general consuming public; repleading futile |
| Whether foreign copyright claims should be dismissed (forum non conveniens / supplemental jurisdiction) | U.S. forum appropriate given defendant's U.S. presence and some ties | Alternative European fora are more appropriate for foreign copyright claims | Forum non conveniens denial (insufficient showing of adequate alternative fora); court declines supplemental jurisdiction and dismisses foreign copyright claims without prejudice |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (pleading standard: plausible factual allegations required)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) (complaint must plead enough facts to raise claim above speculative level)
- Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010) (registration requirement under § 411 is not a subject‑matter jurisdictional rule)
- Norex Petroleum Ltd. v. Access Indus., Inc., 416 F.3d 146 (2d Cir. 2005) (forum non conveniens framework and deference to plaintiff's forum choice)
- Arista Records, LLC v. Doe 3, 604 F.3d 110 (2d Cir. 2010) (elements of contributory infringement: knowledge and material contribution)
- Oneida Indian Nation of N.Y. v. Madison Cty., 665 F.3d 408 (2d Cir. 2011) (when non‑federal claims substantially predominate, district court may dismiss them)
- Schutte Bagclosures Inc. v. Kwik Lok Corp., 48 F. Supp. 3d 675 (S.D.N.Y. 2014) (TDRA requires fame to the general consuming public of the United States)
- Luv N' Care, Ltd. v. Regent Baby Prods. Corp., 841 F. Supp. 2d 753 (S.D.N.Y. 2012) (examples of marks deemed truly famous; TDRA limits niche‑fame claims)