U.S. Acts of Copyright Infringement Can Serve As Predicate Basis for Jurisdiction Over Third Party Contributory Infringement Outside the U.S.

The World in U.S. Courts: Spring 2013 - Intellectual Property (Copyright) | January.07.2013

Minden Pictures, Inc. v. Pearson Education, Inc. (U.S. District Court, N.D. Cal., Jan. 7, 2013)

The “predicate act doctrine” allows recovery of damages stemming from copyright violations outside the U.S. that are linked to domestic infringement. A federal court in San Francisco asserted jurisdiction over unauthorized copying by third parties outside the U.S. because the acts were enabled by defendant’s unauthorized reproduction and distribution from within the U.S.

Facts

In its initial complaint for copyright infringement, plaintiff alleged that it granted a series of limited licenses to its photographs for use in defendant publisher’s textbooks. Defendant allegedly printed copies of its textbooks beyond the limits of the granted license. Defendant then allowed its foreign sub-licensees to reprint copies of the textbooks. Plaintiff sought to amend its complaint for the third time in order to add a claim for contributory copyright infringement by defendant resulting from its transmission and distribution of infringing works to foreign third parties.

Analysis

The court notes that, as a general rule, the Copyright Act has no extraterritorial effect. However, an exception known as the “predicate act doctrine” allows a plaintiff to collect damages for copyright violations outside the U.S. that are directly linked to the domestic violation. The defendant argued that this exception does not apply because it is applicable only to damages arising from infringement within the United States, and does not permit claims for contributory infringement arising from direct infringement that occurs outside the United States.

Assuming that the extraterritoriality question is jurisdictional in nature, the court held that subject matter jurisdiction exists. Defendant’s alleged acts of unauthorized reproduction and distribution to foreign third parties took place in the United States, forming the predicate domestic act of infringement. The third-party extraterritorial acts flow from this predicate act because the foreign third parties then allegedly published local reprints of the domestically-infringing works.

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