A New Frontier: Personal Jurisdiction In A Digital Age: Practical Advice For Copyright Cease and Desist Letters
With the advent of more and more intellectual property becoming intangible and sold over the Internet, the Washington Shoe v. A-Z Sporting Goods case becomes the leading decision for companies in determining where and how to pursue infringement claims. Companies such as Microsoft and Apple deal in infringement of new technologies. Image licensing companies, such as Corbis Images and
Getty Images, can consider lawsuits within their home state for unlicensed use of digital photographs.
A company doing business on Amazon or eBay can consider filing suit for infringement in its home state. All of this is dependent on where the intellectual property resides and if the infringement continues after notification of the unauthorized use. Understanding what is sufficient to create minimum contacts with a forum state is highly important for Seattle businesses that are considering litigation in Washington as a remedy to stop copyright infringers.
Before Washington Shoe, it was difficult for plaintiffs to file suit in their home state unless they could show a company purposefully directed its activities to the forum state to create minimum contacts. Now, personal jurisdiction exists if the plaintiff notified the defendant of his infringing activities yet the defendant continued to sell the infringing products, which is willful infringement. This new reading of personal jurisdiction considers the location of the intellectual property and the defendant’s knowledge of that location and his infringing activities.
In pursuing an intellectual property infringement cause of action, a plaintiff must plan to secure personal jurisdiction in its home state before he even files a complaint. A plaintiff should ensure that their cease and desist notice includes information sufficient to identify the location of the intellectual property, especially if the property is intangible, such as information on the copyright holder, including the location of their business so as to provide proper notice of the effect on the forum state. If the infringing activities continue subsequent to this notice, the defendant may be called into the forum state based on knowledge of where the intellectual property resides.
Under Washington Shoe, intellectual property holders can more easily police their intellectual property rights in their home state. This creates certainty for both intellectual property holders and defendants because a personal jurisdiction determination is based on notice of the location of the intellectual property that is static. Unlike under International Shoe where the determination was based on where the sales occurred, which can be variable and intangible, especially in a digital age where servers reside in warehouses nationwide and information is transmitted in seconds.
Companies such as Microsoft, Apple, Getty Images, and others can now adequately protect their interests on their own terms, not those of the infringing company -- now, that is really in accordance with notions of fair play and substantial justice.