809 F. Supp. 2d 1139
N.D. Cal.2011Background
- Shropshire co-owns Grandma song copyright with Patricia Trigg; Evergreen/BMG administer copyrights under a 1996 agreement; BMG now administers and can negotiate licenses; plaintiff seeks 22.5% royalties; defendant uploaded a video from Canada to YouTube using Irish Rovers audio; plaintiff notified defendant in 2009 to license or remove; YouTube removed then reinstated after defendant’s counter-notice; plaintiff filed suit May 2010 under DMCA and later added direct infringement; SAC asserts three claims: copyright infringement, DMCA misrepresentation, and declaratory relief.
- Defendant allegedly created the video in Canada, uploaded to YouTube’s California servers, causing US-based viewing; Plaintiff sought removal and licensing to authorize use; prior lawsuits and dismissals shaped procedural posture; court previously granted leave to amend and denied dismissal of some claims; current motion seeks 12(b)(1) and 12(b)(6) dismissal; court must decide extraterritoriality treatment before addressing 12(b)(6).
- The court analyzes extraterritoriality as an element of the copyright claim rather than subject matter jurisdiction, citing Arbaugh and circuit split; it notes that other circuits treat extraterritoriality as an element; ultimately adopts the position that extraterritoriality is an element, not jurisdictional.
- Court held that: (1) extraterritoriality should be treated as an element, not jurisdiction; (2) copyright infringement claim survives as the act of uploading to YouTube California servers constitutes infringement within the United States; (3) DMCA misrepresentation claim survives for the first alleged misrepresentation (good faith belief of mistake or misidentification) but not for the second (no copying) assertion; (4) declaratory relief claim survives as underlying claims survive.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Extraterritorial reach: is extraterritoriality jurisdiction or an element? | extraterritoriality limits should be treated as jurisdictional. | extraterritoriality may limit the claim's reach to domestic acts. | extraterritoriality treated as an element (not jurisdictional). |
| Direct copyright infringement viability where acts began in Canada but ended in the U.S. | upload from Canada to YouTube California constitutes infringement in the U.S. | the act began abroad and cannot be infringements under U.S. law. | claim survives; infringement occurred within the United States via YouTube servers. |
| DMCA misrepresentation—whether statements in counter-notice are actionable misrepresentations | defendant knowingly misrepresented facts in counter-notice. | some statements not misrepresentations. | first misrepresentation survives; second misrepresentation granted dismissal. |
| Declaratory relief viability given underlying claims | claims for relief justify declaratory relief. | no controversy without underlying claims. | declaratory relief claim survives. |
Key Cases Cited
- Litecubes, LLC v. Northern Light Products, Inc., 523 F.3d 1353 (Fed. Cir. 2008) (extraterritoriality treated as an element rather than jurisdictional)
- Subafilms, Ltd. v. MGM-Pathe Communications Co., 24 F.3d 1088 (9th Cir. 1994) (extraterritorial applicability—acts not wholly abroad limit Copyright Act)
- Allarcom Pay Television Ltd. v. General Instrument Corp., 69 F.3d 381 (9th Cir. 1995) (one act must be completed entirely within the United States)
- Los Angeles News Service v. Conus Communications Co. Ltd., 969 F. Supp. 579 (C.D. Cal. 1997) (broadcasts infringing U.S. copyright can violate the Copyright Act even if not intended for U.S. audiences)
- Doe v. Geller, 533 F. Supp. 2d 996 (N.D. Cal. 2008) (discusses extraterritorial reach and jurisdictional considerations)