Shropshire v. Canning
| Decision Date | 22 August 2011 |
| Docket Number | Case No.: 10-CV-01941-LHK |
| Parties | ELMO SHROPSHIRE, d/b/a ELMO PUBLISHING, Plaintiff, v. AUBREY CANNING, JR., and PATRICIA TRIGG d/b/a KRIS PUBLISHING, Defendants. |
| Court | U.S. District Court — Northern District of California |
DENYING IN PART DEFENDANT'S
MOTION TO DISMISS PLAINTIFF'S
"Grandma Got Run Over By A Reindeer" is a holiday song written by Randy Brooks in 1979 and performed by Elmo Shropshire and Patsy Trigg. In this copyright infringement suit, Plaintiff Elmo Shropshire claims that he co-owns the copyright to the musical composition of the song and that Defendant Aubrey Canning, Jr., who resides in eastern (Ontario) Canada, uploaded, and failed to remove, an infringing video on YouTube. Presently before the Court is Defendant's motion to dismiss Plaintiff's Second Amended Complaint under Federal Rule of Civil Procedure 12(b)(1) for lack of subject matter jurisdiction and 12(b)(6) for failure to state a claim. Pursuant to Civil Local Rule 7-1(b), the Court deems Defendant's motion to dismiss appropriate for resolution without oral argument and vacates the August 25, 2011 motion hearing. The August 25, 2011 case management conference remains as set. Having considered the submissions of the parties and therelevant law, the Court GRANTS IN PART AND DENIES IN PART Defendant's motion to dismiss.
Plaintiff 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" (hereinafter "Grandma song"). Pl.'s Second Am. Compl. ("SAC") [dkt. #61] ¶ 11. The copyright to the underlying musical composition of the song is co-owned by Plaintiff, d/b/a Elmo Publishing, and by Patricia Trigg, d/b/a Kris Publishing. Id. at ¶ 12. Under a 1996 Co-Publishing Agreement, another entity, Evergreen Copyrights, acted as the copyright administrator of the musical composition of the Grandma song for Elmo Publishing and Kris Publishing under an "Exclusive Copyright Administration Agreement" until September 2010 when BMG Rights Management acquired Evergreen Copyrights. Id. ¶ 13. BMG is now the copyright administrator of the composition under the terms of the same Agreement. Id. Pursuant to the terms of that Agreement, BMG is "the exclusive administrator of the copyrights and renewal rights in the Compositions and shall have the full and exclusive right to control the administration of the Compositions," and has the exclusive right to negotiate "all contracts and licenses" for the musical composition to "Grandma." See May 14, 1996 "Exclusive Copyright Administration Agreement," attached as Exh. 4 to SAC. BMG is also the "third party 'tie breaker'" if the co-owners are in disagreement regarding any license. Id. Plaintiff alleges that he is entitled to 22.5% of the royalties from the Grandma song. SAC ¶ 17.
Plaintiff alleges that in or about December 2007, Defendant 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. Id. at ¶¶ 18, 26. According to the allegations in the SAC, YouTube requires its users to accept a Terms of Service agreement prior to uploading videos, an agreement which notifies users about YouTube's Mountain View, California location and warns users about copyright infringement. Id. at ¶¶ 22-25. 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. Id. at ¶ 42. Defendant responded that he would be willing to comply with Plaintiff's licensing requirements.Id. at ¶ 43. Defendant did not, however, remove the video. Id. On December 27, 2009, Ms. Wendell sent Defendant another e-mail, requesting that Defendant either license the song or remove the video. Id. at ¶ 45. 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. Id. at ¶ 46; see also December 28, 2009 E-mail from Pam Wendell to Aubrey Canning, Jr., attached as Exh. 7 to SAC. 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 SAC ¶ 49, December 28, 2009 E-mail from Aubrey Canning, Jr., to Pam Wendell, attached as Exh. 6 to SAC. The next day, December 29, 2009, Plaintiff filed a "Copyright Infringement Notification" with YouTube pursuant to 17 U.S.C. § 512(c), requesting the removal of Defendant's video. SAC at ¶ 50. YouTube removed the video, but then reinstated it on January 4, 2010 after Defendant filed a counter-notice with YouTube. Id. at ¶¶ 52-53, 58. 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." See January 4, 2010 Counter-Notice, attached as Exh. 1 to SAC. After YouTube reinstated the video, Plaintiff contacted YouTube numerous times requesting that the video be taken down. SAC ¶¶ 61-62. Those efforts were ultimately unsuccessful, as YouTube refused to remove the video unless Plaintiff filed this lawsuit against Defendant. Id. at ¶ 62.
On May 3, 2010, Plaintiff filed his original complaint against YouTube, Inc. and Aubrey Canning, Jr. pursuant to the Digital Millennium Copyright Act ("DMCA"), 17 U.S.C. § 512. Plaintiff voluntarily dismissed YouTube, Inc. from this litigation on June 4, 2010. See June 4, 2010 "Notice of Voluntary Dismissal with Prejudice of YouTube, Inc." [dkt. #6]. 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.See "First Amended Complaint for Copyright Infringement" [dkt. #33]. This Court granted Defendant's motion to dismiss the First Amended Complaint on January 11, 2011 with leave to amend. See "Order Granting Defendant's Motion to Dismiss" [dkt. #60].
Plaintiff filed the 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 Digital Millennium Copyright Act ("DMCA"), 17 U.S.C. § 512 against Defendant; and (3) declaratory relief against Defendant and Trigg.
The Court must first decide whether to address Defendant Canning's motion to dismiss the copyright infringement claim under Federal Rule of Civil Procedure 12(b)(1) or 12(b)(6). 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 Ninth Circuit has treated arguments about the extraterritorial effect of the Copyright Act both ways. For example, in Peter Starr Prod. Co. v. Twin Continental Films, 783 F.2d 1440 (9th Cir. 1986), the Ninth Circuit treated extraterritoriality as an issue of subject matter jurisdiction, finding that "infringing actions that take place entirely outside the United States are not actionable in United States federal courts." Id. at 1442. Conversely, in Subafilms, Ltd. v. MGM-Pathe Communications Co., 24 F.3d 1088 (9th Cir. 1994), the Ninth Circuit addressed extraterritoriality as an element of the claim for copyright infringement. Id. at 1095 (). The Subafilms decision did not provide a definitive answer, but instead merely noted that even though Peter Starr addressed extraterritoriality as jurisdictional, the Peter Starr decision found both that jurisdiction existed and that a claim had been stated. Id. at 1091 fn. 5 ().
In 2006, the U.S. Supreme Court addressed the confusion surrounding the distinction between 12(b)(1) motions and 12(b)(6) motions in Arbaugh v. Y&H Corp., 546 U.S. 500 (2006). Arbaugh warned district courts against deciding questions of failure to state a claim as questions of subject matter jurisdiction. Specifically, Arbaugh held that statutory limitations should presumptively be treated as elements of the claim instead of as jurisdictional requirements unless Congress explicitly provides otherwise. "But when Congress does not rank a statutory limitation on coverage as jurisdictional, courts should treat the restriction as nonjurisdictional in character." Id. at 516.
The Ninth Circuit has not yet interpreted the impact of Arbaugh on how to treat extraterritoriality with respect to the Copyright Act. One case from this district decided since Arbaugh, Doe v. Geller, 533 F. Supp. 2d 996 (N.D. Cal. 2008), considered whether extraterritoriality should be decided as a matter of subject matter jurisdiction. The Geller decision noted that "copyright law is especially unsettled when it comes to...
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