Doe v. Geller: DMCA takedown notice & jurisdiction

Posted by Dirk Avery at 2:42 pm under Copyright, DMCA, Internet.

We’ve discussed the issue of online activities and personal jurisdiction before. In Doe v. Geller (download here), filed last week in the Northern District of California, the plaintiff filed suit in response to the defendant sending a take down notice for plaintiff’s YouTube video and the defendant suing the plaintiff in his home state of Pennsylvania. The plaintiff, going under the pseudonym Brian Sapient, sought relief under the DMCA’s misrepresentation section (17 USC § 512(f)) and a declaratory judgment that the YouTube video (with three seconds of defendant’s work) did not infringe defendant’s copyright. The case gets interesting thanks to the Internet. The plaintiff lives in Pennsylvania, the defendants reside in England, and the third-party, YouTube, is located in California. Where is jurisdiction proper? The court never reached the infringement claim, skirted the subject matter jurisdiction question, and dismissed the suit based on lack of personal jurisdiction.

No federal court has ever addressed subject matter jurisdiction under § 512(f), and the subject matter jurisdiction issue in this case is complex… Overall, copyright law does not provide a satisfactory answer whether United States courts have jurisdiction over cross-border communications in § 512(f) suits… In fact, as an alleged violation of § 512(f) is not a copyright claim, copyright law may be of little help. Plaintiff raises a misrepresentation claim… Instead, perhaps misrepresentation law rather than copyright law should control the subject matter jurisdiction analysis… Even so, treating this case as an ordinary tortious misrepresentation case does not much clarify matters… Accordingly, the court is “convinced that the challenge to the court’s subject-matter jurisdiction is not easily resolved and that the alternative ground [of personal jurisdiction] is considerably less difficult to decide.”

Doe v. Geller, —F.Supp.2d —-, 2008 WL 314498 at 4-5 (N.D. Cal. 2008).

However, in applying the Ninth Circuit’s three-part personal jurisdiction test (purposeful availment, forum-related activities and reasonable exercise), the court had significant trouble with the first prong relying instead on the third.

Personal jurisdiction may flow from a single contact with the forum state if the claim “arise[s] out of that particular purposeful contact of the defendant with the forum state.” [citation omitted] Plaintiff argues that defendants’ single act of sending the takedown notice to YouTube in California is sufficient to establish personal jurisdiction in California courts…

[The purposeful availment] body of precedent does not apply easily to the facts here… The court has no affirmative, binding precedent and no clear guidance. Accordingly, the court declines to rule on the “purposeful direction” prong… either under the Calder effects test (as plaintiffs urge) or under the theory that defendants’ tortious conduct occurred in California (consider Knipple v Viking Communications, Ltd, 236 Conn 602, 610 (1996) (holding that “[f]alse representations entering Connecticut by wire or mail constitute tortious conduct in Connecticut”)).

Id. at 6 (emphasis added).

The third personal jurisdiction factor, reasonableness, involves a seven-factor test. The court found that all seven factors weighed against jurisdiction. Here are a couple of interesting clips from the analysis.

[First factor] The extent of defendants’ “purposeful interjection” into California was not substantial, comprising only the single takedown notice sent to YouTube… [D]efendants’ contacts with California are even more attenuated because, although the takedown notice was sent to California, it was not aimed at any California resident… [T]his factor weighs against personal jurisdiction…

The fourth factor-the forum state’s interest in adjudicating the dispute-weighs against personal jurisdiction. Sapient resides in Pennsylvania, not California… California has little interest in the outcome of this case… Sapient’s only argument to the contrary is that “California has an abiding interest in protecting YouTube videos from improper takedown notices” (see Doc # 30 at 12 n7), citing the free speech clause in the California constitution and a California statute banning the use of lawsuits to chill free speech [citation omitted]. Those provisions apply to California residents… California is not the worldwide regulator of free speech in the digital age.

Id. at 7-9.

Though dismissing for lack of personal jurisdiction, the court hedges with the following comments.

[T]he court’s ruling does not require a per se bar against personal jurisdiction in California over foreign defendants in § 512(f) cases. In some instances, jurisdiction might be appropriate and reasonable based on all the circumstances. If a defendant relies regularly and consistently on YouTube’s takedown procedures, then the purposeful direction or purposeful interjection inquiries might be different. Here, had defendants never sued Sapient in the United States, or had they sued him in a
state other than his residence, then the analysis might be different as well…

[T]he DMCA provides explicitly that internet users such as Sapient who wish to rebut a takedown notice must consent to the jurisdiction of a federal district court (see 17 USC 512(g)(3)(D)), but the statute does not require copyright owners who send takedown notices (such as defendants here) to consent to personal jurisdiction (see 17 USC 512(c)(3)). That difference must be viewed as intentional… If that result seems asymmetrical and unfair, then the problem should be resolved by Congress, not this court.

Id. at 12.

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