The World in U.S. Courts: Summer and Fall 2016 - Intellectual Property – Copyright | June.29.2016
Plaintiff Autodesk has developed and licenses copyrighted computer aided design (“CAD”) software. Defendant Kobayashi + Zedda is a Canadian architectural firm that licensed the software, and is alleged to have infringed on Autodesk’s copyright through unauthorized copying and the provision of unauthorized access to the CAD software. Kobayashi + Zedda moved to dismiss the case, arguing that it was not subject to personal jurisdiction in San Francisco, where the case was brought.
The Court noted that California’s “long-arm” statute asserted jurisdiction to the full extent of the Due Process Clause of the U.S. Constitution, and thus required that Kobayashi + Zedda have “minimum contacts” with the forum for the case to proceed. This required an evaluation of various factors, the first of which being whether Kobayashi + Zedda had “purposefully directed” conduct at the forum. The Court stated that this inquiry required the allegation of an “intentional act” that was “expressly aimed” at the forum, and that the defendant knew would likely result in harm in the forum. The Court found this standard to be satisfied by Kobayashi + Zedda’s alleged willful infringement of intellectual property that it knew was held by a company having its principal place of business in Northern California. The second factor considered by the Court was whether Autodesk’s claim arose as a result of Kobayashi + Zedda’s activities directed towards the forum, which the Court interpreted to mean that the claim would not have arisen “but for” the forum-directed activities. The Court concluded that this factor was also satisfied because the alleged conduct was the infringement itself. Finally, the Court concluded that requiring a Canadian company to defend its conduct in California was “reasonable.” In reaching this conclusion, it relied principally on the allegations of willful infringement, and dismissed Kobayashi + Zedda’s claim that litigating in California would be too burdensome. The Court also acknowledged that Kobayashi + Zedda was a Canadian company, but could identify no particular Canadian interest that counseled against the assertion of jurisdiction.