Moberg v. 33T LLC, Civil No. 08-625(NLH)(JS).

Citation666 F.Supp.2d 415
Decision Date06 October 2009
Docket NumberCivil No. 08-625(NLH)(JS).
PartiesHåkan MOBERG, Plaintiff, v. 33T LLC, Cedric Leygues, and Erwan Leygues, Defendants.
CourtUnited States District Courts. 3th Circuit. United States District Court (Delaware)

Stephen B. Brauerman, Peter B. Ladig, The Bayard Firm, Wilmington, DE, Autumn J. Witt (pro hac vice), Maurice Harmon (pro hac vice), Harmon & Seidman LLC, On behalf of plaintiff.

James L. Higgins, Adam Wyatt Poff, Young, Conaway, Stargatt & Taylor, Wilmington, DE, On behalf of defendants.

OPINION

HILLMAN, District Judge.

This case concerns defendants' use of plaintiff's copyrighted photographs, and it raises issues of first impression with regard to foreign copyrighted works posted on the Internet1, as well as methods of service under the Hague Convention. Defendants have moved to dismiss plaintiff's claims under the United States Copyright Act for lack of subject matter jurisdiction, defendant Erwan Leygues has moved to dismiss plaintiff's claims against him for lack of personal jurisdiction, and both individual defendants have moved to dismiss plaintiff's claims for improper service. For the reasons expressed below, all of defendants' motions will be denied.

BACKGROUND2

Plaintiff, Håkan Moberg, is a professional photographer living in Sweden. In 1993, he created a series of photographs of a woman, titled "Urban Gregorian I-IX." Plaintiff is the owner and exclusive copyright holder of these photographs. The photographs were first published in 2004 on a German website, blaugallery.com, which is an online art shop that offers copies of the works for sale as canvas prints stretched over a wooden framework. Each of the Urban Gregorian photographs attributed the works to plaintiff.

At some point prior to December 2007, five of plaintiff's photographs were posted on the websites dynamicfactory.us, flashtemplate.us and myflashxml.com. These websites sell website design templates, which customers purchase to avoid the costs associated with hiring a professional web developer to design their websites from the ground up. Once a customer purchases the template, the customer uploads its own graphics, pictures, and text. The websites dynamicfactory.us and myflashxml.com are registered to 33T LLC, a Delaware limited liability company, with a registered office in Delaware. Defendant Cedric Leygues is also a registrant for dynamicfactory.us and myflashxml.com, and the sole operator and manager of 33T, responsible for the day-to-day operation of these websites. Erwan Leygues is the registrant for flashtemplate.us and responsible for the day-to-day operation of that website. Cedric Leygues and Erwan Leygues are citizens of, and reside in, France.

From at least December 2007 through March 2008, these websites displayed the Urban Gregorian images. In March 2008, plaintiff's attorney contacted Cedric Leygues and 33T regarding their unauthorized use of plaintiff's photographs, and demanded that they cease their use. When plaintiff filed his complaint in September 2008, some of his images had been removed, but others still remained.3 Plaintiff claims that defendants have violated the United States Copyright Act, 17 U.S.C. § 501 et seq., and the Digital Millennium Copyright Act of 1998 ("DMCA"), 17 U.S.C. § 1201 et seq.

Defendants have moved for the dismissal of these claims on several bases: (1) all defendants argue that this Court lacks subject matter jurisdiction to hear plaintiff's Copyright Act claims; (2) both Leygues defendants contend that plaintiff has failed to properly serve them, and therefore the claims against them must be dismissed; and (3) defendant Erwan Leygues contends that all the claims against him must be dismissed because this Court lacks personal jurisdiction over him. Plaintiff has opposed defendants' motion.4

DISCUSSION
A. Jurisdiction

Plaintiff contends that this Court has subject matter jurisdiction over this matter pursuant to 28 U.S.C. §§ 1331 and 1338. The Court resolves below the issue of whether subject matter jurisdiction exists for plaintiff's Copyright Act, 17 U.S.C. § 501 et seq., claims.5

B. Analysis

As presented above, defendants present three bases for dismissal: (1) lack of subject matter jurisdiction for plaintiff's Copyright Act claims; (2) faulty service; and (3) lack of personal jurisdiction over Erwan Leygues. Each argument will be addressed in turn.

1. Whether this Court lacks subject matter jurisdiction to consider plaintiff's Copyright Act claims

In order for this Court to have subject matter jurisdiction over a plaintiff's Copyright Act claim for an alleged infringement of a "United States work," the work must be registered according to the provisions in the Copyright Act.6 17 U.S.C. § 411(a) ("[N]o civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title."). Defendants contend that plaintiff's Urban Gregorian photographs are "United States works," which plaintiff has failed to register. Because plaintiff's works are not registered, this Court lacks subject matter jurisdiction to hear plaintiff's Copyright Act claims against them.

What appears to be a simple premise actually joins an issue of first impression not addressed by any court. Defendants contend that plaintiff's photographs, which were created undisputably outside the United States, are United States works because when they were posted on a German website, they were "published" simultaneously in Germany and in the United States. 17 U.S.C. § 101 ("[A] work is a `United States work' only if—(1) in the case of a published work, the work is first published—... (B) simultaneously in the United States and another treaty party or parties, whose law grants a term of copyright protection that is the same as or longer than the term provided in the United States."7). Defendants argue that it is "well settled that Internet publications are published everywhere simultaneously, regardless of the location of the server hosting the website." (Def. Br. at 7.) Therefore, because the posting of a photograph on a website simultaneously "publishes" the photograph "everywhere," including the United States, it is a "United States work," and as such, it must be registered prior to filing suit for infringement.

Plaintiff does not dispute that he has never registered his photographs in the United States. He contends, however, that defendants' premise is flawed because the posting of a photograph on a foreign country's website does not publish it simultaneously in the United States so as to transform the work into a "United States work." Because it is not a "United States work" as contemplated by our law, plaintiff argues that he is not required to follow the registration requirement of § 411(a) in order for this Court to have subject matter jurisdiction over his Copyright Act claims. The Court agrees with plaintiff, because, as explained below, the acceptance of defendants' position would overextend and pervert the United States copyright laws, and would be contrary to the Berne Convention.

As a primary matter, despite defendants' statement that it is "well settled" that "Internet publications are published everywhere simultaneously," the issue is far from settled. The two cases that defendants cite to support that proposition only make the observation that the Internet is located in no particular geographical location and it is available to anyone worldwide. (Def. Br. at 7, citing Reno v. American Civil Liberties Union, 521 U.S. 844, 849, 117 S.Ct. 2329, 138 L.Ed.2d 874 (1997) (describing the Internet generally in the context of a challenge to the constitutionality of state statutes enacted to protect minors from "indecent" and "patently offensive" communications on the Internet) and Nitke v. Gonzales, 413 F.Supp.2d 262, 264 (S.D.N.Y.2005) (discussing the breadth of the Internet generally in the context of a constitutional challenge to the Communications Decency Act of 1996, which its obscenity provisions make it a crime to knowingly transmit obscenity by means of the Internet to a minor)). Indeed, defendants' citation to these cases, and not to any case that directly supports their proposition, evidences the lack of any court's consideration of the issue, let alone a consensus on it. Thus, in a case of first impression, this Court must consider the correlation between the posting of foreign copyrighted works on a foreign website and the copyright holder's ability to file suit for infringement in the United States pursuant to the United States Copyright Act.

Even though no court has addressed the issue, plaintiff has presented one legal scholar who has recognized the situation presented here. In his law journal article, Toward a Functional Definition of Publication in Copyright Law, 92 Minn. L.Rev. 1724, 1749 (2008), Thomas Cotter considered, inter alia, the interrelation between the Copyright Act, the Berne Convention, and the Internet, and what constitutes "publication." First, Professor Cotter explains that "in 1988, the United States acceded to the 1971 Paris Act of the Berne Convention for the Protection of Literary and Artistic Works, an international copyright treaty that, among other things, reflects an unfavorable view of copyright formalities." Cotter, supra, at 1730-31. The effect of the United States' accession to the Convention "is to exempt works the country of origin of which is not the United States from the registration requirement."8 Id. at 1743. Thus, at first blush, it appears that because plaintiff's photographs did not originate in the United States, they are not subject to the registration requirement, and such a formality is not a prerequisite to suit.

Professor Cotter explains, however, that the determination of the country of origin is not so simple, as that determination hinges on whether the work is "published," and, if so, where the work is...

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