The questions of jurisdiction on copyright infringement in USA

Elmo Shropshire, who also goes by a stage name of “Dr. Elmo,” is known for his performance of the song “Grandma Got Run Over By A Reindeer” (“Grandma song”). The copyright to the underlying musical composition of the song is co-owned by d/b/a Elmo Publishing and by Patricia Trigg, d/b/a Kris Publishing. Elmo Shropshire, plaintiff, alleges that in or about December 2007, Aubrey Canning posted a video on YouTube, which combined Christmas-related pictures with audio of a Canadian musical group, “The Irish Rovers”, singing the Grandma song.

On December 25, 2009, plaintiff’s office manager, Pam Wendell, contacted defendant informing him that his unlicensed video infringed on plaintiff’s copyright and requesting that defendant remove the video from YouTube. Defendant responded that he would be willing to comply with plaintiff’s licensing requirements. Defendant did not, however, remove the video. On December 27, 2009, Ms. Wendell sent defendant another e-mail, requesting that defendant either license the song or remove the video. Ms Wendell sent an additional e-mail on December 28, 2009, explaining that in order to continue to use the Grandma song, defendant would need to license the recording from the Irish Rovers and the composition from the publishers. Defendant, however, still did not remove the video.

Instead, defendant replied to plaintiff’s representative by e-mail on December 28, 2009, that plaintiff should “contact the video site managers and get my video removed. I won’t be doing it.” The next day, December 29, 2009, plaintiff filed a “Copyright Infringement Notification” with YouTube, requesting the removal of defendant’s video. YouTube removed the video, but then reinstated it on January 4, 2010 after defendant filed a counter-notice with YouTube.

In that counter-notice, defendant stated that “no part of my Grandma video is a copy of any original work made by [the plaintiff]” and that he had a “good faith belief the material was removed due to a mistake or misidentification of the material to be removed or disabled.” After YouTube reinstated the video, plaintiff contacted YouTube numerous times requesting that the video be taken down. Those efforts were ultimately unsuccessful, as YouTube refused to remove the video unless plaintiff filed lawsuit against defendant.

On May 3, 2010, plaintiff filed his original complaint against YouTube, Inc. and Aubrey Canning, Jr. pursuant to the DMCA. Plaintiff voluntarily dismissed YouTube, Inc. from this litigation on June 4, 2010. On October 18, 2010, plaintiff filed an amended complaint, adding a claim of direct copyright infringement pursuant to the Copyright Act, 17 U.S.C. § 106 based on defendant’s unlicensed creation of the video synchronizing images of reindeer with audio of the Irish Rovers singing the Grandma song. The court granted defendant’s motion to dismiss the first amended complaint on January 11, 2011 with leave to amend.

Plaintiff filed the second amended complaint (SAC) on February 10, 2011, against defendant and Patricia Trigg, d/b/a Kris Publishing. The SAC includes three claims: (1) copyright infringement against defendant; (2) misrepresentation under the DMCA against defendant; and (3) declaratory relief against defendant and Trigg.

The heart of defendant’s argument is that the alleged infringing act – uploading the Grandma video to YouTube – took place in Canada and thus falls outside the reach of the Copyright Act. There is currently no clear consensus among the courts regarding whether the issue of the extraterritorial reach of the Copyright Act should be treated as a matter of subject matter jurisdiction, or should instead be treated as an element of a claim.

The Court finds that in this case, the alleged act of direct copyright infringement – uploading a video from Canada to YouTube’s servers in California for display within the United States – constitutes an act of infringement that is not “wholly extraterritorial” to the United States. The allegedly infringing act in this case began in Canada, where defendant created his Grandma song video. Had defendant stopped there, there is no doubt that the strict presumption against extraterritoriality would apply and plaintiff would not have a claim.

The problem is that defendant did not stop at the mere creation of the Grandma song video in Canada, but instead allegedly uploaded it to YouTube’s California servers for display in the United States after agreeing to YouTube’s Terms of Service agreement. Thus defendant’s direct action led to the creation of a copy of the Grandma video on YouTube’s servers in California, and to the subsequent viewing of the video by potentially thousands in the United States.

In sum, plaintiff has sufficiently alleged an act of direct copyright infringement that is not “wholly extraterritorial” to the United States: defendant’s transmission of an infringing video from Canada to YouTube’s servers in California, from which it was subsequently accessible and viewed by those within the United States for approximately two years. The Court therefore denied defendant’s motion to dismiss plaintiff’s copyright infringement claim.