Pablo Star Ltd. v. Welsh Gov't

• Decision Date: 16 March 2016
• Docket Number: 15-CV-1167 (JPO)
• Citation: 170 F.Supp.3d 597
• Parties: Pablo Star Ltd., et al., Plaintiffs, v. The Welsh Government, et al., Defendants.
• Court: U.S. District Court — Southern District of New York

170 F.Supp.3d 597

Pablo Star Ltd., et al., Plaintiffs,

v.The Welsh Government, et al., Defendants.

15-CV-1167 (JPO)

United States District Court, S.D. New York.

Signed March 16, 2016

Danial A. Nelson, Kevin Patrick McCulloch, Nelson & McCulloch LLP, New York, NY, for Plaintiffs.

Richard James Oparil, Caroline Maxwell, Porzio, Bromberg & Newman P.C., Washington, DC, for Defendants.

OPINION AND ORDER

J. PAUL OETKEN

, District Judge

In this case, the Welsh Government, a political subdivision of the United Kingdom, and various media companies are accused of using two photographs depicting the poet Dylan Thomas without authorization and in violation of the Copyright Act. Plaintiffs, owners of the copyrights in these photos, are Pablo Star Ltd. and Pablo Star Media Ltd. (“Plaintiffs”)—two related companies that are “organized and registered under the laws of Ireland and the United Kingdom.” (Dkt. No. 26 ¶ 1). The operative Complaint in this matter was filed on May 11, 2015. (Dkt. No. 26.) On June 1, 2015, a motion to dismiss was filed by Defendants the Welsh Government and Visit Wales (“the Welsh Government”), the Tribune Content Agency, LLC, the Pittsburgh Post-Gazette, E.W. Scripps, Co., the Journal Media Group, Inc., Treasure Coast Newspapers, the Richmond Times Dispatch, and the Miami Herald Media Co. (the “Publisher Defendants”) (collectively, “Defendants”). (Dkt. No. 39.)

Defendants move to dismiss on multiple grounds, including: (1) insufficient service of process under Federal Rule of Civil Procedure 12(b)(5)

; (2) improper venue under Rule 12(b)(3) ; (3) lack of personal jurisdiction over the Publisher Defendants under Rule 12(b)(2) ; and (4) lack of subject-matter jurisdiction under Rule 12(b)(1) because the Welsh Government is immune from suit under the Foreign Sovereign Immunities Act (“FSIA”), see 28 U.S.C. § 1604. Because the Welsh Government was not properly served under the FSIA, venue is improper, and the Court lacks personal jurisdiction over all but one of the Publisher Defendants, the motion is, with certain limited exceptions, granted.

I. Background¹

Dylan Thomas, a Welsh-born poet who lived from 1914 to 1953, is best known for his troubled and chaotic personal life and for penning the poem “Do not go gentle into that good night.” See Dylan Thomas , The Poetry Foundation, http://www.poetryfoundation.org/bio/dylan-thomas (last viewed March 1, 2016). Plaintiffs, related media companies “organized and registered under the laws of Ireland and the United Kingdom,” own copyrights in two photographs depicting Thomas: “Just Married Dylan Thomas” and “Dylan and Caitlin at Penard” (“the Photos”). (Dkt. No. 26 ¶¶ 1-4.)

Plaintiffs allege that the Welsh Government operates “Visit Wales” as “an administrative division or business enterprise to encourage tourism and otherwise publicize and promote Wales as a tourist destination.” (Id. ¶ 15.) As a part of its effort to promote tourism in Wales, the Welsh Government, “acting through Visit Wales,” has “published, displayed, distributed, and otherwise used copies of [the Photos] in advertisements, publications, and other promotional materials directed at and specifically targeted towards the United States generally and New York residents in particular.” (Id. ¶¶ 14-16.) Specifically, Visit Wales operates a website that is accessible in the United States and which has displayed the Photos without authorization. (Id. ¶ 26; Dkt. No. 26-12.) Visit Wales also created a downloadable map and guide depicting a “Dylan Thomas Walking Tour of Greenwich Village, New York” that included one of the Photos. (Dkt. Nos. 26-1, 26-2.)

Moreover, Plaintiffs allege that the “Welsh Government provided unauthorized copies of [the Photos] to the [ ] Publisher Defendants, either directly or by making copies of the [P]hotos available on its various websites.” (Dkt. No. 17 at 1.) In turn, the Publisher Defendants “published and displayed [the Photos] on their respective websites and/or print publications.” (Dkt. No. 26 ¶ 87.)

The First Amended Complaint asserts claims for copyright infringement against all Defendants, as well as claims for contributory and vicarious infringement against the Welsh Government. (Id. ¶¶ 107-129.)

II. Discussion

Defendants move to dismiss on several bases, including insufficient service of process, improper venue, lack of personal jurisdiction, and lack of subject-matter jurisdiction. (Dkt. No. 39.) As to subject-matter jurisdiction, the Welsh Government argues that it is immune from suit under the FSIA, which provides the “sole basis for obtaining jurisdiction over a foreign state in the courts of this country.” Rogers v. Petroleo Brasilei ro, S.A. , 673 F.3d 131, 136 (2d Cir.2012)

(quoting Argentine Republic v. Amerada Hess Shipping Corp. , 488 U.S. 428, 443, 109 S.Ct. 683, 102 L.Ed.2d 818 (1989) ). Under the FSIA, “a foreign state [is] immune from the jurisdiction of the courts of the United States and of the States except as provided” by certain statutory exceptions. 28 U.S.C. § 1604. The parties do not dispute that the Welsh Government is a “political subdivision” of the United Kingdom and thus that jurisdiction over it can be obtained only in accordance with the requirements of the FSIA. Rather, they contest the applicability of three statutory exceptions to the general rule of foreign sovereign immunity: the commercial activity exception, 28 U.S.C. § 1605(a)(2) ; the expropriation exception, 28 U.S.C. § 1605(a)(3) ; and the noncommercial tort exception, 28 U.S.C. § 1605(a)(5).

Determining whether this Court possesses subject-matter jurisdiction over the Welsh Government would require it to reach difficult questions at the frontiers of both copyright law and the law of foreign sovereign immunity.² Because the claims against the Welsh Government in this case must be dismissed on independent grounds, the Court declines to reach the issue of immunity under the FSIA. See Magi XXI, Inc. v. Stato della Città del Vaticano , 714 F.3d 714, 720 n. 6 (2d Cir.2013)

(“We need not consider whether this Court lacks subject-matter jurisdiction by virtue of the Vatican State having immunity under the Foreign Sovereign Immunities Act because in appropriate circumstances, ... a court may dismiss for lack of personal jurisdiction without first establishing subject-matter jurisdiction.”) (citation and internal quotation marks omitted).

Although “jurisdictional questions ordinarily must precede merits determinations in dispositional order .... [subject-matter] [j]urisdiction is vital only if the court proposes to issue a judgment on the merits.” Sinochem Int' l Co. v. Mala ys i a Int'l Shipping Corp. , 549 U.S. 422, 431, 127 S.Ct. 1184, 167 L.Ed.2d 15 (2007)

(citation omitted). In turn, “a federal court has leeway to choose among threshold grounds for denying audience to a case on the merits” in the interests of judicial restraint and judicial economy. Id . For example, when “the alleged defect in subject-matter jurisdiction raises a difficult and novel question, the court does not abuse its discretion by turning directly to personal jurisdiction.” Ruhrgas AG v. Marathon Oil Co. , 526 U.S. 574, 588, 119 S.Ct. 1563, 143 L.Ed.2d 760 (1999). So too, courts may decide a “challenge to venue before addressing the challenge to subject-matter jurisdiction” in the interests of adjudicative efficiency. Brodt v. Cty

.

of Harford , 10 F.Supp.3d 198, 200 (D.D.C.2014). See

Magi XXI , 714 F.3d at 720 n. 6. Prudential concerns, including the interests of judicial restraint and economy, caution against venturing into the subject-matter jurisdiction terrain in this case when it can be resolved on more familiar territory. Defendants' arguments for dismissal based on improper service, lack of personal jurisdiction, and improper venue are discussed in turn.

A. Service of Process

“The FSIA provides the sole means for effecting service of process on a foreign state.” Harrison v. Republic of Sudan , 802 F.3d 399, 403 (2d Cir.2015)

. See 28 U.S.C. § 1608(a). The statute prescribes four methods of service. “Plaintiffs must attempt service by the first method, or determine that it is unavailable, before attempting subsequent methods in the order in which they are laid out.” Harrison , 802 F.3d at 403. The methods of service offered in the statute are:

(1) by delivery of a copy of the summons and complaint in accordance with any special arrangement for service ...

(2) if no special arrangement exists, by delivery of a copy of the summons and complaint in accordance with an applicable international convention on serve of judicial documents ...

(3) if service cannot be made under paragraphs (1) or (2), by sending a copy of the summons and complaint and a notice of suit ... by any form of mail required a signed receipt, to be addressed and dispatched by the clerk of the court to the head of the ministry of foreign affairs of the foreign state ...

(4) if service cannot be made within 30 days under paragraph (3), by sending two copies of the summons and complaint ... to the Secretary of State in Washington ... and the Secretary shall transmit one copy of the papers through diplomatic channels to the foreign state ....

28 U.S.C. § 1608(a)

. “[S]trict adherence to the terms of [§] 1608(a) is required.” Transaero, Inc. v. La Fuerza Aerea Boliviana , 30 F.3d 148, 154 (D.C.Cir.1994). The plaintiff carries the burden of demonstrating that service on the defendant was proper. See

Zhang v. Baidu.com Inc. , 932 F.Supp.2d 561, 564 (S.D.N.Y.2013) ; Lewis & Kennedy, Inc. v. Permanent Mission of the Republic of Botswana to the United Nations , No. 05–CV–2591, 2005 WL 1621342, at *2 (S.D.N.Y. July 12, 2005) (collecting cases).

Plaintiffs contend that they served the Welsh Government in accordance with a “special arrangement for service,” the first method under the statute, and then—“out of an abundance of caution”—also served the government under the third method by effecting service on the head of the Ministry of Foreign Affairs of the...