378 F. Supp. 3d 300 | S.D. Ill. | 2019
Plaintiffs Pablo Star Ltd. and Pablo Star Media Ltd., two related companies organized and registered under the laws of Ireland and the United Kingdom, own the copyrights to two photographs depicting the poet Dylan Thomas. Plaintiffs have sued Defendants the Welsh Government, Tribune Content Agency, LLC ("TCA"), and certain John Does for having allegedly infringed their copyrights in these two photographs in violation of the Copyright Act,
I. Background
Familiarity with the background of this dispute is presumed based on this Court's prior opinions addressing the Welsh Government's earlier-filed motion to dismiss, see Pablo Star Ltd. v. Welsh Gov't ,
On February 18, 2015, Plaintiffs commenced this action against the Welsh Government and various media companies for infringement of Plaintiffs' copyrights in two photographs depicting the poet Dylan Thomas. (Dkt. No. 1.) The nub of Plaintiffs' claims against the Welsh Government is that it has "published, displayed, distributed, and otherwise used unauthorized copies of Plaintiff[s'] copyrighted photographs to in [sic] advertisements, publications, and other promotional materials directed at and specifically targeted towards New York residents," all with the purpose of increasing tourism to Wales. (Dkt. No. 1 ¶¶ 11-13; see also Dkt. No. 26 ¶¶ 29-30 (similar allegations in Plaintiffs' First Amended Complaint).)
By an Opinion and Order dated March 16, 2016, this Court granted the Welsh Government's motion to dismiss all claims asserted against it in Plaintiffs' First Amended Complaint on the grounds of improper service and improper venue. (Dkt. No. 53.) With respect to venue, the Court held in relevant part that Plaintiffs had not alleged facts sufficient to justify venue in this district because they had
not alleged that any of the specific conduct at issue occurred in this district, let alone a "substantial part" of it. Neither Plaintiffs nor the Welsh Government reside in the United States. The only concrete infringing materials that Plaintiffs can identify are materials that were available online. But the fact that an infringing material is accessible via the internet in a jurisdiction is hardly sufficient to conclude that this infringement occurred in this district for the purposes of venue. Indeed, all of the Welsh Government's relevant conduct-including the creation and maintenance of the websites at issue-appears to have occurred abroad. On this basis, the Court cannot conclude that a substantial part of the events giving rise to this claim occurred in New York.
(Dkt. No. 53 at 16 (internal citations and footnotes omitted).) Plaintiffs then moved for reconsideration of that decision (Dkt. No. 58), and the Court denied that motion on May 11, 2016 (Dkt. No. 65).
Plaintiffs subsequently moved for leave to replead their allegations against the Welsh Government (Dkt. No. 73), attaching to their motion a proposed new pleading that is now the operative Second Amended Complaint (compare Dkt. No. 75-1, with Dkt. No. 99). Defendant TCA filed an opposition to Plaintiffs' motion for leave to replead, asserting in substance that granting Plaintiffs leave to replead would be futile because this district remained an improper venue for Plaintiffs' claims against the Welsh Government. (Dkt. No. 78.) The Court disagreed. By an *305Opinion and Order dated May 1, 2018, the Court granted Plaintiffs leave to file the Second Amended Complaint, holding that Plaintiffs' new "allegations, taken as true, plausibly establish[ed] that the Welsh Government undertook significant actions in this district that [were] material to its allegedly unauthorized copying of Plaintiffs' photographs." (Dkt. No. 96 at 5.) Among "Plaintiffs' factual allegations [relevant to that conclusion] include[d] the following:
The Welsh Government has a permanent presence in New York and maintains offices in New York City. The Welsh Government created infringing "promotional materials" such as "advertisements, brochures, pamphlets, [and] New York City walking tour maps," which included unauthorized copies of Plaintiffs' photographs. In addition, the Welsh Government created display panels for an exhibition called "Welsh in America ," which made unauthorized use of Plaintiffs' photographs. Prior to creating these materials, the Welsh Government drafted a report detailing its strategies to promote tourism to Wales, and identified the United States as one of its key target markets.
Moreover, Plaintiffs allege, on information and belief, that "the Welsh Government distributed and loaned out copies" of the infringing promotional materials from its offices in New York City, and loaned out and "publicly displayed the infringing panels of the Welsh in America exhibition in New York City."
(Dkt. No. 96 at 4-5 (citing SAC ¶¶ 16, 18, 22-23; 27-29; 32-34; Dkt. Nos. 75-2, 75-3) (footnotes omitted).) In response to TAC's contention that the Court had previously rejected similar arguments when denying Plaintiffs' motion for reconsideration, the Court explained that "unlike at the motion-for-reconsideration stage, the Court ... [was required to] draw all inferences in favor of Plaintiffs" in connection with their motion to replead, and concluded that "any deficiencies addressed in the Court's opinion on reconsideration ha[d] been remedied by the plausible information-and-belief allegations of the" Second Amended Complaint. (Dkt. No. 96 at 6 n.5.) Finally, the Court also declined to address TAC's one-sentence suggestion that the Welsh Government might be immune from suit on the basis of sovereign immunity, explaining that the "Welsh Government will be free to raise any immunity defense on its own behalf in response to the SAC." (Dkt. No. 96 at 7 n.6.)
Plaintiffs filed the operative Second Amended Complaint on May 8, 2018. (Dkt. No. 99.) The Welsh Government has now filed a motion to dismiss Plaintiffs' newly repleaded claims against it pursuant to Federal Rule of Civil Procedure 12(b)(1), asserting that it is immune from suit on the basis of sovereign immunity. (Dkt. Nos. 105, 106 at 1.)
II. Legal Standard
The Foreign Sovereign Immunities Act ("FSIA"),
"When [a] defendant claims immunity under the FSIA," that defendant must first "present[ ] a prima facie case *306that it is a foreign sovereign." Figueroa v. Ministry of Foreign Affairs of Swed. ,
"Determining whether [a plaintiff's] burden is met involves a review of the allegations in the complaint, the undisputed facts, if any, placed before the court by the parties, and-if the plaintiff comes forward with sufficient evidence to carry its burden of production on this issue-resolution of disputed issues of facts." Anglo-Iberia ,
III. Discussion
A. Sovereign Immunity
The Welsh Government moves to dismiss Plaintiffs' claims against it pursuant to Rule 12(b)(1) on the basis of sovereign immunity. (Dkt. Nos. 105, 106 at 1.) In support of its motion, the Welsh Government submits various exhibits and affidavits. (See, e.g. , Dkt. Nos. 106-2-106-4, 107-09.) Plaintiffs, in contrast, do not present to the Court any new evidence in opposing the instant motion.
As an initial matter, the Welsh Government has made a prima facie showing that it is a political subdivision of a foreign state within the meaning of the FSIA. (See Dkt. No. 121 at 2 (citing Gov't of Wales Act § A1 ("[T]he Welsh Government ... [is] a permanent part of the United Kingdom's constitutional arrangements.")).
Among the FSIA's "[g]eneral exceptions to the jurisdictional immunity of a foreign state" is what is commonly referred to as the "commercial activity" exception.
A foreign state shall not be immune from the jurisdiction of courts of the United States or of the States in any case ... in which the action is based [i] upon a commercial activity carried on in the United States by the foreign state; or [ii] upon an act performed in the United States in connection with a commercial activity of the foreign state elsewhere; or [iii] upon an act outside the territory of the United States in connection with a commercial activity of the foreign state elsewhere and that act causes a direct effect in the United States.
The FSIA provides that a "commercial activity" may be "either a regular course of commercial conduct or a particular commercial transaction or act," and instructs courts that the "commercial character of an activity shall be determined by reference to the nature of the course of conduct or particular transaction *308or act, rather than by reference to its purpose."
Section 1605(a)(2) further provides that in order to be eligible for the commercial activity exception to the FSIA's general grant of sovereign immunity, a plaintiff's claim must also be "based upon " the relevant "commercial activity," or, under the second and third prongs of the exception, based upon an act performed in connection with that commercial activity.
Here, the Court begins, as it must, "by identifying the particular conduct on which [Plaintiffs'] action is 'based' for purposes of the [FSIA]."
*309Nelson ,
The Court now asks whether Plaintiffs have demonstrated that the Welsh Government's alleged acts of copying and distribution qualify as "commercial activit[ies]" within the meaning of the FSIA. The Court concludes that they do. The exhibits attached to Plaintiffs' Second Amended Complaint demonstrate that the types of conduct the Welsh Government is alleged to have engaged in are "the type [s ] of actions by which a private party engages in 'trade and traffic or commerce.' " Weltover ,
The copies of Plaintiffs' photo that are reproduced in Plaintiffs' exhibits are generally part of the Welsh Government's issuance of promotional materials for Welsh-themed activities and travel. (See, e.g. , Dkt. No. 99-1 ("Dylan Thomas Walking Tour of Greenwich Village, New York" map published by the Welsh Government, which uses one of Plaintiffs' photographs); Dkt. No. 99-2 ("Discovering the Welsh in America" article published by the Welsh Government, which uses one of Plaintiffs' photographs); Dkt. No. 99-6-99-9 (copies of articles published by various United States media outlets promoting tourism to Wales and using the same infringing photographs included as part of the Welsh Government's publications).
In moving to dismiss Plaintiffs' Second Amended Complaint, the Welsh Government points to unrebutted evidence showing that "the Welsh Government did not use the photographs for profit[,] but [instead used them] to carry out its public mission to encourage economic development, culture, and tourism in Wales," evidence the Welsh Government contends demonstrates that any alleged copying was done in connection with a uniquely sovereign objective (i.e. , promoting tourism) insufficient to constitute "commercial activity." (See Dkt. No. 106 at 12-14.) But the Welsh Government's evidence of the purposes behind its copying and distributing of Plaintiffs' photos, however persuasive, is tangential to the Court's inquiry. That is because courts considering whether a government's conduct is a "commercial activity [as defined by the FSIA] ... 'ask not whether the foreign government is acting with a profit motive or instead with the aim of fulfilling uniquely sovereign objectives[,] but rather whether the particular actions that the foreign state performs (whatever the motive behind them) are the type of actions by which a private party engages in trade and traffic or commerce.' " Swarna ,
At least one other court in this district has rejected similar arguments made by foreign entities seeking to evade copyright claims brought against them pursuant to the FSIA's commercial activity exception. In Leutwyler v. Office of Her Majesty Queen Rania Al-Abdullah ,
Finally, even with Plaintiffs having shown that their suit is "based upon a commercial activity carried on ... by the" Welsh Government, Plaintiffs still must show that this conduct was "carried on in the United States " in order to overcome the Welsh Government's assertion of sovereign immunity.
In granting Plaintiffs leave to replead, the Court concluded that Plaintiffs' allegations, "taken as true, plausibly establish[ed] that the Welsh Government undertook significant actions in this district that are material to its allegedly unauthorized copying of Plaintiffs' photographs." (Dkt. No. 96 at 5.) But unlike at the motion-to-replead stage, the Court can no longer "draw all reasonable inferences in [Plaintiffs'] favor" in connection with the instant Rule 12(b)(1) motion to dismiss. Figueroa ,
The Court concludes that Plaintiffs' evidence is sufficient to carry their burden. Most relevant to the Court's conclusion in this regard are the exhibits attached to Plaintiffs' Second Amended Complaint in which the Welsh Government itself represents that at least some of the infringing materials at issue in this suit were "developed by the Welsh Government in New York" and were available to order "for distribution free-of-charge ... from the *312Welsh Government in New York." (See Dkt. No. 99-2 at 2-3.) Buttressing this conclusion is Plaintiffs' evidence showing that some of the Welsh Government's infringing materials were also published in the United States by United States news outlets in furtherance of the Welsh Government's attempts to promote tourism to Wales. (Dkt. Nos. 99-6-99-9.)
The most persuasive evidence submitted by the Welsh Government in support of its attempts to rebut this conclusion is the affidavit of Rob Holt, the Deputy Director of Tourism Development and Major Events of the Department of Economy, Skills and Natural Resources for the Welsh Government.
Many of Holt's representations are immaterial to the Court's inquiry at this stage: It does not matter whether Wales distributed copies of the photograph for sale or for profit, or only for purposes of promoting tourism. Instead, it matters only where the relevant copies of Plaintiffs' photos were made and distributed. In that respect, Holt's affidavit is conspicuous for what it fails to say. This is particularly true with respect to Holt's failure to call into questions Plaintiffs' allegations regarding some of the particular activities the "Welsh Government has engaged in and undertaken ... in this District," which is of course located in the United States. (See Dkt. No. 99 ¶¶ 22-25.) As already discussed, Plaintiffs support these allegations with documentary evidence in the form of a walking tour mapped onto New York City streets (Dkt. No. 99-1), a map that would presumably be useful only if distributed in a manner that had "substantial contact with the United States," 28 U.S.C. 1603(e). These allegations are further supported by an exhibit consisting of a webpage published by the Welsh Government that includes copies of Plaintiffs' photos alongside an offer of sale of tickets to "the Official Dylan Thomas Walking Tour of New York," a tour the Welsh Government then describes as "a collaboration *313of the Welsh Government in New York and the family of Dylan Thomas." (Dkt. No. 99-2 (emphasis added).) In addition, that website explains that copies of the infringing materials are available to order "for distribution free-of-charge ... from the Welsh Government in New York. " (Id. (emphasis added).) Finally, that same website also confirms that the "Dylan Thomas Walking Tour of Greenwich Village" that is attached to Plaintiffs' Second Amended Complaint (Dkt. No. 99-1) "was [also] developed by the Welsh Assembly Government in New York " (Dkt. No. 99-2 at 2 (emphasis added)).
Holt's affidavit fails to rebut what the exhibits to Plaintiffs' Second Amended Complaint persuasively demonstrate: that "the Welsh Government in New York " played an active role in the development and distribution of the promotional materials which included copies of Plaintiffs' photographs. (Id. ) Moreover, Plaintiffs' other exhibits also corroborate Plaintiffs' allegation that "the Welsh Government contracted with private businesses located in New York City to publish, print, display, and distribute the Infringing Promotional Materials, including the infringing walk tour maps and infringing Welsh in America display panels." (Dkt. No. 99 ¶ 25; see also, e.g. , Dkt. Nos. 99-6-99-9 (evidence of Welsh Government's coordination with other United States news outlets).) Taken together, all of this evidence persuasively demonstrates that the Welsh Government's "commercial activity ... [had] substantial contact with the United States."
In summary, the Court concludes that Plaintiffs have produced evidence that establishes that their claims are "based upon a commercial activity carried on in the United States by [a] foreign state,"
B. The Welsh Government's Remaining Contentions
1. International Comity
The Welsh Government briefly suggests that the doctrine of international comity calls for the dismissal of Plaintiffs' claims. (See Dkt. No. 106 at 14.)
The Second Circuit has described the doctrine of comity as " 'amorphous' and 'fuzzy,' " and it has counseled that "even where the doctrine clearly applies[,] it 'is not an imperative obligation of courts but rather is a discretionary rule of practice, convenience, and expediency.' " Royal and Sun All. Ins. Co. of Can. v. Century Int'l Arms, Inc. ,
In support of its suggestion that comity should dictate the outcome of the parties' dispute here, the Welsh Government submits to the Court a copy of a judgment issued by an Irish court that dismissed some claims raised by Pablo Star Media Ltd. against the Welsh Government. (See Dkt. No. 107 at 33.) But it is entirely unclear from that Irish judgment whether Pablo Star Ltd. was also a party *314to that suit, or whether Plaintiffs' claims failed because of a jurisdictional bar sufficiently similar to that at issue here to warrant res judicata. (Id. ; see also Dkt. No. 107 at 41 (suggesting the possibility of Plaintiffs obtaining jurisdiction for their claims against the Welsh Government in another United Kingdom court).) The Welsh Government's passing suggestion that international comity warrants dismissal of Plaintiffs' claims before this Court is insufficient to carry its "burden of proving that comity [is] appropriate" in this case. Allstate Life Ins. Co. ,
2. Pablo Star Media Ltd.'s Dissolution
The Welsh Government presents for the first time in its reply brief evidence demonstrating that one of the Plaintiffs, namely Pablo Star Media Ltd., has been dissolved and may lack standing to proceed in this matter. (Dkt. Nos. 121 at 1, 121-1 ¶ 4, 121-1 at 3-4.) The Court notes that this evidence does nothing to rebut the standing of at least one Plaintiff to proceed in this action. (See Dkt. No. 99 ¶¶ 9-10 (alleging that the action's other Plaintiff, Pablo Star Ltd., retains an independent right to pursue claims at issue in this suit).) Because "the presence of one party with standing is sufficient to satisfy Article III's case-or-controversy requirement," Rumsfeld v. Forum for Academic & Institutional Rights, Inc.
3. Plaintiffs' Berne Convention Claims
Finally, the Welsh Government moves pursuant to Federal Rule of Civil Procedure 12(b)(6) to dismiss all of Plaintiffs' claims brought under the Berne Convention. (Dkt. No. 106 at 1, 16-17.) However, Plaintiffs disclaim any attempt to state independent claims under the Berne Convention, and explain that their allegations regarding the Berne Convention are relevant only to their attempts to demonstrate a violation of international law sufficient to trigger the expropriation exception to the FSIA,
IV. Conclusion
For the foregoing reasons, the Welsh Government's motion to dismiss is DENIED. The Welsh Government is directed to file an answer to the Second Amended Complaint within 21 days of the date of this Opinion.
The Clerk of Court is directed to close the motion at Docket Number 105.
SO ORDERED.
Plaintiffs contend that "[i]n an FSIA case," courts will grant a motion to dismiss for lack of subjection matter jurisdiction only where a pleading is "wholly insubstantial or frivolous," and that in doing so courts "must accept as true all of the factual allegations set out in plaintiffs' complaint, draw inferences from those allegations in the light most favorable to plaintiffs, and construe the complaint liberally." (Dkt. No. 119 at 4 (citations and internal quotation marks omitted).) Plaintiffs are incorrect. The legal standard governing the instant motion to dismiss is that outlined by the Court above. See supra Section II. In fact, the Supreme Court just two terms ago expressly addressed and rejected the propriety of a legal standard akin to that articulated by Plaintiffs here. See Bolivarian Republic of Venez. ,
Available at http://www.legislation.gov.uk/ukpga/2006/32/section/A1.
Plaintiffs allege on information and belief that the Welsh Government provided these United States news outlets with the infringing copies of Plaintiffs' photo as part of their efforts to encourage tourism to Wales. (See, e.g. , SAC ¶¶ 47-48.) The contents of these articles corroborate Plaintiffs' allegations: The articles not only favorably depict and encourage travel to Wales, but also link directly to the website for Visit Wales (see, e.g. , 99-7 at 6-7), which according to a Welsh Government official is "an administrative division of the Welsh Government charged with carrying out the Government's policy to promote tourism to Wales" (Dkt. No. 107 ¶ 5). Plaintiffs also attach to their Second Amended Complaint a "Framework Action Plan" from the Welsh Government in which it resolved to "[r]e-launch websites for US and German markets providing [them with] tailored content." (Dkt. No. 99-14 at 6.) A Welsh official has confirmed that the Government of Wales does license images for purposes of tourism promotion (Dkt. No. 107 ¶ 8), and the Welsh Government offers no evidence to rebut Plaintiffs' allegations that the Welsh Government did in fact provide United States news outlets with infringing copies of Plaintiffs' photos. The Court concludes that Plaintiffs have produced evidence sufficient to corroborate their allegations that the United States news articles appended to the Second Amended Complaint were published in coordination with the Welsh Government.
Alternatively, Plaintiffs could make a showing under the statute's second and third prongs that their suit is "based ... upon an act performed in the United States in connection with a commercial activity of the foreign state elsewhere," or "upon an act outside the territory of the United States in connection with a commercial activity of the foreign state elsewhere and that act causes a direct effect in the United States."
The other evidence the Welsh Government submits in disputing the applicability of the commercial activity exception is irrelevant to the Court's disposition of this question. The Welsh Government's remaining evidence relates either to the locus of Plaintiffs' alleged injury (see, e.g. , Dkt. No. 106-4), or to the purposes underlying the Welsh Government's promotion of tourism (see, e.g. , Dkt. Nos. 106-2-106-3, 107 at 4-31). The former category of evidence would be relevant to only the tortious act exception to the FSIA's general grant of sovereign immunity, see