Uri Geller, a performance artist who claims that his psychic powers enable him to bend spoons using only his mind, is the director and shareholder of Explorologist, Ltd., a private concern registered in London, England. Sapient uploaded a video clip to YouTube, originally aired on the NOVA television program, that featured an illusionist named James Randi challenging Geller’s powers. The NOVA clip included three seconds of another video clip that featured “Dr. C. J. Hughes” describing Geller’s psychic powers (“Hughes clip”).
As the copyright owner of the Hughes clip, Explorologist sent YouTube a takedown notice under the Digital Millennium Copyright Act (“DMCA”), 17 U.S.C. §512(c)(3), via fax and email. YouTube flagged and removed the NOVA clip and temporarily suspended Sapient’s account, and for a few weeks none of Sapient’s videos were viewable on YouTube.
Explorologist then filed a complaint against Sapient in federal court in Pennsylvania, where Sapient resided, alleging copyright infringement under British law. In response, Sapient filed a complaint for a declaratory judgment in California, where YouTube is incorporated. Sapient requested a finding that the NOVA video clip posting was noninfringing and that Geller and Explorologist knowingly misrepresented copyright infringement in their takedown notice in violation of §512(f), which provides penalties for misrepresentation of infringement. 17 U.S.C. §512(f). Geller and Explorologist brought a motion to dismiss Sapient’s complaint for lack of subject matter and personal jurisdiction.
In a case of first impression, the California District Court noted that the subject matter jurisdiction under §512(f) was complex. Explorologist and Geller argued that they sent their YouTube takedown notice via fax and email from England. This was significant because U.S. copyright laws do not apply extraterritorially. Subafilms, Ltd. V. MGM-Pathe Comm’ns Col., 24 F.3d 1088 (9th Cir. 1994). The Court was unable to come to a satisfactory conclusion, however, regarding jurisdiction over cross-border communications, explaining that other §512(f) suits did not resolve the issue.
Turning to personal jurisdiction, the Court considered whether Explorologist’s single act of sending the takedown notice to YouTube in California was sufficient to establish personal jurisdiction in California. Applying the Ninth Circuit’s seven-part test for “reasonableness,” the Court concluded that under the totality of the circumstances, Explorologist could not reasonably anticipate being called upon to present a defense in a distant forum, under a foreign legal system. FDIC v. British-American Ins. Co., 828 F.2d 1439 (9th Cir. 1987). Also, the DMCA does not require copyright owners who send takedown notices to consent to personal jurisdiction. 17 U.S.C. 512(c)(3).
Although the California District Court dismissed the complaint for lack of personal jurisdiction, Sapient was not without recourse. Sapient could raise his §512(f) claim as a counterclaim in the Pennsylvania action under a regular jurisdiction analysis or the federal long-arm statute. Fed.R.Civ.P. 4(k)(2).
Judge(s): Vaughn R. Walker, Chief Judge
Related Categories: Civil Procedure , Civil Remedies , Technology
|Plaintiff Lawyer(s)||Plaintiff Law Firm(s)|
|Marcia Hofmann||Electronic Frontier Foundation|
|Corynne McSherry||Electronic Frontier Foundation|
|Jason M. Schultz||Electronic Frontier Foundation|
|Defendant Lawyer(s)||Defendant Law Firm(s)|
|Jeffrey Vucinich||Clapp Moroney Bellagamba Vucinich Beeman & Scheley|
|Richard Winelander||The Winelander Law Group|