Reminder that Copyright Infringement Must Occur in US for Subject Matter Jurisdiction

From https://www.usasumo.com/us-sumo-open/

In Superama Corp., Inc vs. Tokyo Broadcasting System TV, No. 19-55981 (9th Cir. 2020), the Ninth Circuit reaffirmed the district court decision to dismiss Superama’s copyright infringement claim against Tokyo Broadcasting as the court lacked subject matter jurisdiction to determine a copyright infringement suite.

Superama, which organizes the U.S. Sumo Open and makes videos and photographs from the event available on YouTube, had sued Tokyo Broadcasting System TV (TBS) as it discovered that TBS downloaded its copyrighted material off of YouTube, altered it, and rebroadcasted it throughout Japan without obtaining a license. Superama subsequently sued TBS for copyright infringement in the US Federal Court. The district court, however, dismissed the suite due to lack of subject matter jurisdiction under the longstanding rule that “[i]n general, United States copyrights laws do not have extraterritorial effect, and therefore, infringing actions that take place entirely outside the United States are not actionable.” Subafilms, Ltd. v. MGM-Pathe Commc’ns Co., 24 F.3d 1088, 1098 (9th Cir. 1994) (en banc)

On appeal, however, Superama claimed that given that although the infringing material was not distributed in the US, the court still had jurisdiction as YouTube’s US servers automatically creates a copy of a file on its servers when a user downloads it. Therefore, given that a copy of the unlicensed footage was made in the US as part of TBS's process of downloading it in Japan, the US had subject matter jurisdiction.

The Ninth Circuit, however, found no relevant precedent to support Superama claim that

"infringement occurs when a download abroad automatically creates a copy of the material on a United States server. There is thus no basis for finding jurisdiction where downloaded material is stored in the United States, but all infringing activity takes place in another country.”

Source:

Justia

Publishers Sue the Internet Archive over National Emergency Library

Back in early April, the Internet Archive (i.e., a non-profit organization that stores websites and other in digital form), or IA, launched what it calls the “National Emergency Library.” This library according to its website is “a collection of books that supports emergency remote teaching, research activities, independent scholarship, and intellectual stimulation while universities, schools, training centers, and libraries are closed.” When this library was launched, it opened to both great praise from supporters of free and equal access to education and ridicule from publishers and authors whose copyrights were allegedly infringed. Today, a group of four publishing companies have bought a copyright infringement lawsuit against the IA.

As per the complaint filed in the United States District Court for the Southern District of New York, the publishers claim that IA has engaged in “willful mass copyright infringement. Without any license or any payment to authors or publishers, IA scans print books, uploads these illegally scanned books to its servers, and distributes verbatim digital copies of the books in whole via public-facing websites. With just a few clicks, any Internet-connected user can download complete digital copies of in-copyright books from Defendant.” As stated further in the compliant, the IA has a library of 1.3 million books that it is distributing without a license.

When IA launched it’s library, it claimed it was not infringing on any copyrights as it purchased physical copies of all of its books, scanned them, and then distributed e-copies of the book under the theory called “Controlled Digital Lending” (“CDL”). As mentioned previously on Secondary Meaning News, the CDL is a

"method that allows libraries to loan print books to digital patrons in a ‘lend like print’ fashion. Through CDL, libraries use technical controls to ensure a consistent ‘owned-to-loaned’ ratio, meaning the library circulates the exact number of copies of a specific title it owns, regardless of format, putting controls in place to prevent users from redistributing or copying the digitized version.”

The compliant, however, states that this theory has no legal foundation and was “concocted from whole "cloth and continue to get worse.” Specifically, since the pandemic began, IA has abandoned the CDL model and began lending out unlimited e-books without waiting for readers to return a checked-out e-book or via purchasing licenses to distribute multiple e-books.

“What Internet Archive is doing is no different than heaving a brick through a grocery store window and handing out the food — and then congratulating itself for providing a public service,” as per Douglas Preston, President of the Authors Guild that supports the complaint. “It’s not a public service to violate the rights of thousands of hard-working authors, most of whom desperately need the income.”

The plaintiffs seek an injunction, damages, and lost profits.

Source:

• Case

• WAMU

• Secondary Meaning News

H&M Gets a Win against Unicolor’s Copyright Infringement Suit

Left: Unicolor's copyrighted Design (EH101). Right: H&M's garment containing the similar design.

The Ninth Circuit on Friday reversed a district court’s award of damages and attorneys’ fees in favor of Unicolors against H&M in a copyright infringement action due to questions regarding Unicolor’s copyright's registrability.

Unicolor is a company that creates designs for use on textiles and garments and H&M is a clothing retailer. Unicolor had sued H&M for copyright infringement for allegedly copying a design that it created in 2011, which was found to be very similar to garments that H&M began selling in 2015. Specifically, in 2011 Unicolors applied and received a copyright registration for a piece of art work called EH101, which was part of the registration No. VA 1-770-400 (“the ’400 Registration”). The ‘400 registration is a “single-unit registration” of thirty-one separate designs in a single registration.

After the district court found that H&M infringed on the design and awarded damages and attorney fees, H&M file an appealed by stating that the ‘400 registration contained a number of inaccuracies that made it invalid and, thus, invalid for the district court's awards.

In particular, H&M noted that Unicolors used a single copyright registration to register thirty-one separate works, one of which was EH101. But to register a collection of works as a “single unit” as Unicolors did, H&M maintained that the works must have been first sold or offered for sale in some integrated manner. And because the undisputed evidence adduced at trial showed that Unicolors included in the ’400 Registration at least nine confined works that were sold separately and exclusively to individual customers, H&M argued that the collection of works identified in the ’400 Registration were not first sold together and at the same time. In turn, H&M contended the district court should find the ’400 Registration invalid and enter judgment in favor of H&M.

The Ninth Circuit agreed with H&M and found that the inaccurate application is crucial to the case as a valid registration is required to bring a copyright infringement action. The Ninth Circuit sent the case back to the district court and directed the judge to refer to the Register of Copyrights as to whether the copyright is valid given the inaccuracies it contains. Additionally, the court held that district court was wrong to rule that Unicolor’s copyright could only be invalid if there was an intent to defraud the Copyright Office. The Ninth Circuit pointed to the appeals court's recent ruling in Gold Value International Textile Inc. v. Sanctuary Clothing LLC et al., where it had previously determined that there is no intent-to-defraud requirement in copyright law.

Source:

• Case