Herer v. Ah Ha Publishing, LLC
927 F. Supp. 2d 1080
D. Or.2013Background
- Jack Herer authored The Emperor Wears No Clothes, copyrights registered April 20, 1990, later passing to his estate.
- Mark Herer, as personal representative, alleges Ah Ha Publishing, LLC and Michael Kleinman infringed the Work by printing and distributing copies.
- Defendants moved to dismiss for lack of personal jurisdiction and improper venue, or transfer to the Western District of Texas (WDTX).
- Texas action (WDTX) involved a license/rights dispute between Ah Ha and the estate; Oregon action addresses copyright infringement by the same defendants.
- The Oregon court found no clear evidence of willful infringement and noted the record was intertwined with merits, declining jurisdictional discovery.
- The court transferred the Oregon action to the Western District of Texas under the first-to-file rule, and stayed/redirected proceedings to Texas.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the Oregon court has personal jurisdiction over Defendants | Herer asserts purposeful direction via willful infringement harming the estate in Oregon. | Kleinman/Ah Ha contend lack of Oregon ties and contacts to support jurisdiction. | Not resolved; case transferred for lack of jurisdictional resolution due to intertwinement with merits. |
| Whether venue in Oregon is proper or transfer to Texas is required | Herer argues venue is proper where defendant is found or can be found; Oregon connected via impact. | Defendants urge improper venue; transfer to Texas appropriate given connections and prior suits. | Transfer to Western District of Texas granted under first-to-file rule; Oregon venue improper. |
| Whether the first-to-file rule governs whether this action should be transferred | Herer recognizes later filing but argues differences in parties should not defeat rule; seeks efficiency. | Kleinman/Ah Ha contend Texas action is earlier and dispositive, making Oregon case duplicative. | First-to-file rule applies; transfer to Texas warranted. |
| Whether jurisdictional discovery is warranted given intertwined merits | Herer requests discovery to establish willfulness and forum-directed infringement. | Defendants emphasize record insufficient for jurisdictional proof; merits intertwined. | Jurisdictional discovery denied; resolution deferred pending transfer to Texas. |
Key Cases Cited
- Brayton Purcell LLP v. Recordon & Recordon, 606 F.3d 1124 (9th Cir. 2010) (used to apply the 'express aiming' test for specific jurisdiction in copyright dispute)
- Columbia Pictures Television v. Krypton Broad. of Birmingham, Inc., 106 F.3d 289 (9th Cir. 1997) (context for venue in copyright cases and jurisdictional analysis)
- Washington Shoe Co. v. A-Z Sporting Goods Inc., 704 F.3d 668 (9th Cir. 2012) (establishes the three-part effects test and purposeful direction for infringement)
- Data Disc, Inc. v. Sys. Tech. Associates, Inc., 557 F.2d 1280 (9th Cir. 1977) (permits jurisdictional discovery when facts are intertwined with merits)
- Alltrade, Inc. v. Uniweld Products, Inc., 946 F.2d 622 (9th Cir. 1991) (discusses transfer, stay, or dismissal when cases are duplicative)
- Cedars-Sinai Med. Ctr. v. Shalala, 125 F.3d 765 (9th Cir. 1997) (equitable considerations in applying first-filed rule)
- Nakash v. Marciano, 882 F.2d 1411 (9th Cir. 1989) (first-to-file rule requires substantial similarity, not exact parallelism)
- Colorado River Water Conservation Dist. v. United States, 424 U.S. 800 (Supreme Court 1976) (limits application of abstention; factors for parallel proceedings)
- Panavision Int’l L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998) (forum analysis and personal jurisdiction considerations)