09-1739-cv
Penguin Group (USA) Inc., v. American Buddha
1 UNITED STATES COURT OF APPEALS
2 FOR THE SECOND CIRCUIT
3 August Term, 2009
4 (Argued: January 7, 2010 Question Certified: June 15, 2010)
5 Docket No. 09-1739-cv
6 -------------------------------------
7 PENGUIN GROUP (USA) INC.,
8 Plaintiff-Appellant,
9 - v -
10 AMERICAN BUDDHA,
11 Defendant-Appellee.
12 -------------------------------------
13 Before: SACK, KATZMANN, and CHIN,* Circuit Judges.
14 Appeal from an order of the United States District
15 Court for the Southern District of New York (Gerard E. Lynch,
16 Judge) granting the defendant's motion to dismiss the plaintiff's
17 copyright infringement action for lack of personal jurisdiction.
18 Jurisdiction over the defendant, American Buddha, was asserted
19 under a provision of New York's Long-Arm Statute. Because
20 deciding whether the plaintiff's alleged injury resulting from
21 alleged copyright infringement with respect to material uploaded
22 to the Internet out-of-state and made available from servers
23 located out-of-state occurred in New York for purposes of
*
The Honorable Denny Chin, who was at the time of argument
a United States District Judge for the Southern District of New
York, sitting by designation, is now a member of this Court.
1 applying section 302(a)(3)(ii) requires the resolution of an
2 undecided question of New York law, we certify that question to
3 the New York Court of Appeals.
4 RICHARD DANNAY, Cowan Liebowitz &
5 Latman, P.C. (Thomas Kjellberg, of
6 counsel), New York, NY, for Plaintiff-
7 Appellant.
8 CHARLES CARREON, Online Media Law, PLLC,
9 Tucson, AZ, for Defendant-Appellee.
10 Sack, Circuit Judge:
11 Plaintiff Penguin Group (USA) ("Penguin") appeals from
12 an order of the United States District Court for the Southern
13 District of New York (Gerard E. Lynch, Judge) granting defendant
14 American Buddha's motion pursuant to Federal Rule of Civil
15 Procedure 12(b)(2) to dismiss Penguin's copyright infringement
16 action for lack of personal jurisdiction. Penguin Group (USA)
17 Inc. v. Am. Buddha, No. 09 Civ. 528, 2009 WL 1069158, 2009 U.S.
18 Dist. LEXIS 34032 (S.D.N.Y. Apr. 21, 2009). Penguin alleges in
19 its complaint that American Buddha unlawfully uploaded to servers
20 an unauthorized copy of four of Penguin's copyrighted works for
21 downloading, via the Internet and free of charge, by any of the
22 50,000 members of what American Buddha terms its "online
23 library."
24 The sole issue on appeal is whether there is a basis
25 for personal jurisdiction over American Buddha in New York
26 enabling the district court to decide this dispute. Penguin
27 asserted that the court has such jurisdiction under a provision
28 of New York's Long-Arm Statute, N.Y. C.P.L.R. § 302(a)(3)(ii),
2
1 that allows for jurisdiction over an out-of-state defendant with
2 no contacts with New York, if, inter alia, the defendant is
3 alleged to have committed a tortious act outside the State that
4 caused, and reasonably should have been expected by the putative
5 defendant to cause, injury to a person or property within the
6 State.
7 The district court recognized two competing lines of
8 authority interpreting section 302(a)(3)(ii), one that views the
9 situs of injury as the location of the infringing conduct and one
10 that views the situs of injury as the location of the plaintiff
11 and, in some cases, the location of its intellectual property.
12 Relying on the first line of authority and rejecting the second,
13 the court concluded that the situs of the injury allegedly
14 resulting from the asserted infringement of Penguin's copyrights
15 would be where the book was electronically copied -- presumably
16 in Arizona or Oregon, where American Buddha and its computer
17 servers were located -- and not New York, where Penguin was
18 headquartered. Accordingly, the court dismissed the case for
19 failure adequately to plead injury in New York. Penguin, 2009 WL
20 1069158, at *4, 2009 U.S. Dist. LEXIS 34032, at *13.
21 Determining the situs of injury for the purposes of
22 N.Y. C.P.L.R. § 302(a)(3)(ii) in a copyright case requires
23 analysis of state law and policy considerations that this Court
24 is ill-suited to make. Specifically, it requires a
25 determination of how the New York State Legislature intended to
3
1 weigh the breadth of protection to New Yorkers whose copyrights
2 have allegedly been infringed against the burden on non-resident
3 alleged infringers whose connection to New York may be remote and
4 who may reasonably have failed to foresee that their actions
5 would have consequences in New York.
6 We therefore certify the following question to the New
7 York Court of Appeals: In copyright infringement cases, is the
8 situs of injury for purposes of determining long-arm
9 jurisdiction under N.Y. C.P.L.R. § 302(a)(3)(ii) the location of
10 the infringing action or the residence or location of the
11 principal place of business of the copyright holder? Although
12 Penguin has not effectively pleaded that the situs of injury is
13 affected by the fact that the infringement here occurred through
14 the media of the Internet and an online library, we recognize
15 that this factor may be relevant to the considerations
16 underlying the definition of the situs of injury due to the
17 speed and ease with which the Internet may allow out of state
18 actions to cause injury to copyright holders resident in New
19 York.
20 BACKGROUND
21 The plaintiff, Penguin Group USA, describes itself as
22 "the U.S. arm of the internationally renowned Penguin Group, a
23 leading United States trade book publisher and the second-largest
24 English-language trade book publisher in the world, with its
4
1 principal place of business" in New York City. Appellant's Br.
2 at 5. American Buddha describes itself as "an Oregon nonprofit
3 corporation" that, through its operation of a "passive website"
4 known as the Ralph Nader Library but unaffiliated in any way with
5 Ralph Nader, "operates an online library that provides access to
6 classical literature and other works through the website,
7 including three works published in print format by Plaintiff-
8 Appellant Penguin Group (USA) Inc." Appellee's Br. at 3
9 (footnotes omitted).
10 Penguin brought this copyright infringement action
11 against American Buddha under 17 U.S.C. § 501, alleging that
12 American Buddha infringed on Penguin's copyrights in four works1
13 by publishing complete copies of them on coordinated websites –
14 together comprising "online libraries" -- that it operates called
15 the American Buddha Online Library and the Ralph Nader Library.
16 American Buddha has made these works available to its 50,000
17 members free of charge. It has also provided its members with
18 assurances that American Buddha's uploading of these works and
19 the users' downloading of the works do not constitute copyright
20 infringement because they are protected under Sections 107 and
21 108 of the Copyright Act, 17 U.S.C. § 101 et seq., which govern
22 fair use and reproduction by libraries and archives,
1
The four works at issue are Oil! by Upton Sinclair, It
Can't Happen Here by Sinclair Lewis, The Golden Ass by Apuleius
translated by E.J. Kenney, and On the Nature of the Universe by
Lucretius translated by R.E. Latham.
5
1 respectively. Penguin disputes that any exception to the
2 Copyright Act applies to American Buddha's conduct.
3 American Buddha, as noted, is an Oregon not-for-profit
4 corporation whose principal place of business is in Arizona and
5 whose websites are hosted on servers located in Arizona and
6 Oregon. Aside from the accessability of its sites in New York,
7 American Buddha conducts no business in, and has no other
8 contacts with, the State. The infringing conduct was not alleged
9 to have occurred in New York.
10 American Buddha filed a motion in the district court to
11 dismiss Penguin's complaint pursuant to Federal Rule of Civil
12 Procedure 12(b)(2) for lack of personal jurisdiction. Penguin
13 asserted personal jurisdiction under New York's Long-Arm Statute,
14 N.Y. C.P.L.R. § 302. American Buddha was not subject to the
15 jurisdiction of courts in New York under N.Y. C.P.L.R.
16 § 302(a)(1) (conferring jurisdiction over a party that "transacts
17 any business within the state or contracts anywhere to supply
18 goods or services in the state") or N.Y. C.P.L.R. § 302(a)(2)
19 (conferring jurisdiction over a party that "commits a tortious
20 act within the state"). Penguin therefore premised its claim of
21 jurisdiction on N.Y. C.P.L.R. § 302(a)(3)(ii), which, under
22 specified circumstances, allows for long-arm jurisdiction over
23 out-of-state residents who commit tortious acts outside of the
24 State if the resulting injury occurs in, and it was foreseeable
25 to the prospective defendant that the injury would occur in, New
6
1 York.2 The central question for the district court, in deciding
2 whether it had personal jurisdiction over the defendant with
3 respect to the claims made in the complaint, was whether the
4 injury from the alleged infringement by American Buddha occurred
5 in New York.
6 The district court granted American Buddha's motion to
7 dismiss because it found the situs of injury to be where the
8 electronic copying of the works was made -- presumably, although
9 this was not explicitly stated by the court, in Arizona or
10 Oregon, where the servers to which American Buddha uploaded the
11 works were located -- and not in New York, where Penguin's
12 headquarters is located. Penguin, 2009 WL 1069158, at *3-*4,
13 2009 U.S. Dist. LEXIS 34032, at *12-*13. The court recognized a
14 division of authority as to how to determine the situs of injury
15 for the purposes of N.Y. C.P.L.R. § 302(a)(3)(ii). It was
16 ultimately persuaded by a line of cases recognizing "the well-
17 established principle requiring a direct injury in New York" and
18 rejecting jurisdiction based on "purely derivative economic
19 injury" suffered in-state solely because of the location of the
20 plaintiff's business in-state. Id., 2009 WL 1069158, at *3-*4,
21 2009 U.S. Dist. LEXIS 34032, at *9, *11.
2
As Penguin made no allegation that persons downloading
material from the websites thereby infringed its copyrights,
potential injury for personal jurisdiction purposes would have to
be the result of American Buddha's, and not any downloading
user's, infringement.
7
1 The court recognized that the Internet was a
2 complicating factor for personal jurisdiction analysis. It
3 nonetheless concluded that in this case, the Internet "plays no
4 role in determining the situs of plaintiff's alleged injury"
5 because a single incident of copyright infringement that occurred
6 in Oregon or Arizona was alleged; downloading of that copied
7 material by users in other locations, including hypothetically
8 New York, was not. Id., 2009 WL 1069158, at *4, 2009 U.S. Dist.
9 LEXIS 34032, at *12.
10 Penguin appeals.
11 DISCUSSION
12 I. Introduction
13 There is only one issue presented on appeal, which is
14 whether, for the purposes of New York's Long-Arm Statute, the
15 situs of injury in copyright infringement cases is the location
16 of the infringing conduct or the location of the plaintiff and,
17 perhaps, the copyright. The language of the statute provides
18 insufficient guidance to allow us to answer that question based
19 on the statute's plain meaning. And while Penguin has not
20 specifically pleaded that the situs of injury is influenced by
21 the fact that the alleged infringement here was conducted by
22 means of the Internet and online libraries, we recognize that
23 this fact may affect the analysis.
24 We find insufficient guidance to answer the question of
25 where the situs of injury is located in the text of the statute,
8
1 the statute's legislative history, or the jurisprudence of New
2 York state courts. The district court did not have the ability
3 to ask the New York Court of Appeals for guidance. We do. We
4 therefore certify to the New York Court of Appeals this question:
5 In copyright infringement cases, is the situs of injury for
6 purposes of determining long-arm jurisdiction under N.Y.
7 C.P.L.R. § 302(a)(3)(ii) the location of the infringing action
8 or the residence or location of the principal place of business
9 of the copyright holder?
10 II. Standard of Review
11 We review a district court's dismissal of an action for
12 want of personal jurisdiction de novo, construing all pleadings
13 and affidavits in the light most favorable to the plaintiff and
14 resolving all doubts in the plaintiff's favor. DiStefano v.
15 Carozzi N. Am., Inc., 286 F.3d 81, 84 (2d Cir. 2001) (per
16 curiam).
17 III. New York's Long-Arm Statute: N.Y. C.P.L.R. § 302
18 A plaintiff bears the burden of demonstrating personal
19 jurisdiction over a person or entity against whom it seeks to
20 bring suit. In re Magnetic Audiotape Antitrust Litig., 334 F.3d
21 204, 206 (2d Cir. 2003) (per curiam). "In order to survive a
22 motion to dismiss for lack of personal jurisdiction, a plaintiff
23 must make a prima facie showing that jurisdiction exists."
24 Thomas v. Ashcroft, 470 F.3d 491, 495 (2d Cir. 2006). Such a
25 showing entails making "legally sufficient allegations of
9
1 jurisdiction," including "an averment of facts that, if
2 credited[,] would suffice to establish jurisdiction over the
3 defendant." In re Magnetic Audiotape, 334 F.3d at 206 (internal
4 quotation marks and ellipsis omitted).
5 In litigation arising under federal statutes that do
6 not contain their own jurisdictional provisions, such as the
7 Copyright Act under which suit is brought in the case at bar,
8 federal courts are to apply the personal jurisdiction rules of
9 the forum state, see Fort Knox Music, Inc. v. Baptiste, 203 F.3d
10 193, 196 (2d. Cir. 2000), provided that those rules are
11 consistent with the requirements of Due Process, see Metro. Life
12 Ins. Co. v. Roberston-Ceco Corp., 84 F.3d 560, 567 (2d Cir.
13 1996). Except where the long-arm statute permits jurisdiction to
14 the extent permitted by principles of Due Process -- as it
15 commonly does in states other than New York -- analysis under Due
16 Process principles is not necessary unless there is long-arm
17 jurisdiction under the applicable state statute. See Best Van
18 Lines, Inc. v. Walker, 490 F.3d 239, 242 (2d Cir. 2007); Savin v.
19 Ranier, 898 F.2d 304, 306 (2d Cir. 1990).
20 In New York, the question of long-arm personal
21 jurisdiction over an out-of-state defendant is governed by N.Y.
22 C.P.L.R. § 302.3 The only basis for personal jurisdiction over
3
Section 302 permits a court to exercise personal
jurisdiction over an out-of-state party that: (1) transacts
business or contracts to supply goods or services within the
state; (2) commits a tortious act within the state; (3) commits a
tortious act outside of the state that causes an injury to a
person or property within the state, provided that the party (i)
10
1 American Buddha in New York that is asserted by Penguin is
2 provided by section 302(a)(3)(ii). It provides for jurisdiction
3 over an out-of-state defendant who "commits a tortious act
4 without the state causing injury to person or property within the
5 state, . . . if he . . . expects or should reasonably expect the
6 act to have consequences in the state and derives substantial
7 revenue from interstate or international commerce . . . ."
8 In order to establish jurisdiction under that
9 subsection of the law, a plaintiff is thus required to
10 demonstrate that (1) the defendant's tortious act was committed
11 outside New York, (2) the cause of action arose from that act,
12 (3) the tortious act caused an injury to a person or property in
13 New York, (4) the defendant expected or should reasonably have
14 expected that his or her action would have consequences in New
15 York, and (5) the defendant derives substantial revenue from
16 interstate or international commerce. LaMarca v. Pak-Mor Mfg.
17 Co., 95 N.Y.2d 210, 214, 735 N.E.2d 883, 886, 713 N.Y.S.2d 304,
18 307 (2000).
19 Only the third requirement of section 302(a)(3)(ii) is
20 in dispute on this appeal: Whether the defendant's allegedly
21 copyright-infringing conduct in Oregon or Arizona caused the
22 requisite injury in New York.
engages in a persistent course of conduct with the state or (ii)
expects or reasonably should expect the act to have consequences
in the state and derives substantial revenue from interstate or
international commerce; or (4) owns, uses or possesses real
property in the state. N.Y. C.P.L.R. § 302.
11
1 If these five requirements were satisfied and personal
2 jurisdiction were thus established under New York law, we would
3 then assess whether a finding of personal jurisdiction comports
4 with the Due Process Clause of the Fourteenth Amendment. Best
5 Van Lines, 490 F.3d at 242; Savin, 898 F.2d at 306. For reasons
6 explained below, we do not reach that issue on this appeal.
7 IV. The Situs of Injury Under
8 N.Y. C.P.L.R. § 302(a)(3)(ii)
9 Neither the New York Court of Appeals nor this Court
10 has decided what the situs of injury is in an intellectual
11 property case. District courts in this Circuit that have
12 addressed the question have reached disparate results, some
13 concluding that the injury occurs where the plaintiff experiences
14 the loss; some concluding that it depends where the infringed
15 property is held, apparently assuming that the property is held
16 at its owner's residence or principal place of business;4 and
4
There is a possible question at the threshold that neither
the district court nor the parties have addressed and which we do
not here decide: whether a copyright -- in and of itself an
intangible thing -- has a physical location for jurisdictional
purposes and, if so, what that location is.
Several courts have at least suggested that intellectual
property has a location for jurisdictional purposes. See, e.g.,
McGraw-Hill Cos., Inc. v. Ingenium Techs. Corp., 375 F. Supp. 2d
252, 256 (S.D.N.Y. 2005) (finding injury to be "where the
allegedly infringed intellectual property is held"); Design Tex
Group, Inc. v. U.S. Vinyl Mfg. Corp., No. 04 Civ. 5002, 2005 WL
357125, at *1 (S.D.N.Y. Feb. 14, 2005) (same); Tatum v. Hunter
Eng'g Co., 25 F.3d 1050 (6th Cir. 1994) (per curiam) (Table)
(finding the fact that "the design processes and intellectual
property are located in California" to be relevant to evaluating
contacts with that state).
If it does have a location, then, what is it? Federal law
appears equally unsettled on this point. Some courts have
12
1 some concluding that the injury occurs where the infringing
2 conduct took place. See section IV(E), infra.
3 A. The District Court's Analysis of the Situs of Injury
4 The district court recognized a division of authority
5 as to the situs of injury for purposes of section 302(a)(3)(ii)
6 in intellectual property infringement cases. The court was
7 persuaded by decisions that suggested or concluded that the situs
8 of injury is where the infringing conduct occurred (in this case,
9 Oregon or Arizona) rather than where the plaintiff is located and
10 the copyrights are owned (in this case, New York). Penguin, 2009
11 WL 1069158, at *3-*4, 2009 U.S. Dist. LEXIS 34032, at *9.
concluded, either explicitly or implicitly, that the location of
intellectual property is the residence of its owner. See, e.g.,
Horne v. Adolph Coors Co., 684 F.2d 255, 259 (3d Cir. 1982)
("[I]nsofar as the situs of the property damaged by the alleged
wrongdoing is a concern, both a state trade secret and a patent
should be deemed to have their fictional situs at the residence
of the owner."). "The theory [of these cases] is that, since
intellectual property rights relate to intangible property, no
particular physical situs exists. If a legal situs must be
chosen, it is not illogical to pick the residence of the owner."
Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558,
1570 (Fed. Cir. 1994).
Other courts have reasoned that intellectual property is
located wherever the infringing action is taken, because that is
where the sales related to the intellectual property are in fact
lost. See, e.g., id. at 1570 ("[W]hen an infringement occurs by
a sale of an infringing product, the right to exclude is violated
at the situs where the sale occurs.")
The issue has not been briefed or otherwise raised by the
parties. We therefore accept for the purposes of this appeal the
district court's implicit conclusion that copyrights have a
location and that their location in this case is in New York
State. See Penguin, 2009 WL 1069158, at *2-*3, 2009 U.S. Dist.
LEXIS 34032, at *8 (recognizing line of cases that suggest that
intellectual property injuries are located in the state where
intellectual property is held).
13
1 New York has long held that "the residence or
2 domicile of the injured party within a State
3 is not a sufficient predicate for
4 jurisdiction, which must be based upon a more
5 direct injury within the State and a closer
6 expectation of consequences within the State
7 than the indirect financial loss resulting
8 from the fact that the injured person resides
9 or is domiciled there."
10
11 Id., 2009 WL 1069158, at *2-*3, 2009 U.S. Dist. LEXIS 34032, at
12 *7-*8 (quoting Fantis Foods, Inc. v. Standard Importing Co.,
13 Inc., 49 N.Y.2d 317, 326, 402 N.E.2d 122, 125-26, 425 N.Y.S.2d
14 783, 786-87 (1980)).
15 The principal factual question addressed in the course
16 of the district court's analysis was where the plaintiff lost
17 business. Id., 2009 WL 1069158, at *3 & n.5, 2009 U.S. Dist.
18 LEXIS 34032, at *9-*10 & n.5 (citing Am. Eutectic Welding Alloys
19 Sales Co., Inc. v. Dytron Alloys Corp., 439 F.2d 428, 433 (2d.
20 Cir. 1971)). The court analyzed this case as a run-of-the-mine
21 copyright infringement action: It did not explicitly consider
22 the impact, if any, of the means by which the alleged
23 infringement was committed -- by use of an online library
24 delivered through the Internet. Because Penguin pleaded
25 infringement only by American Buddha, and not by any individual
26 who downloaded material from American Buddha's site, the court
27 reasoned that business was lost through the copying of the
28 copyrighted works by American Buddha and not through their
29 placement on the Internet. Id., 2009 WL 1069158, at *4, 2009
30 U.S. Dist. LEXIS 34032, at *12. The business was therefore lost
31 where the books were uploaded -- Oregon or Arizona -- not where
14
1 they were downloaded and used, which could have been anywhere
2 that the Internet is available, including New York. Id.
3 B. Penguin's Arguments Regarding the Situs of Injury
4 On appeal, Penguin contends that the district court
5 relied on the wrong line of cases both as a matter of law and as
6 a matter of policy. As a legal matter, Penguin argues that those
7 cases are inconsistent with the reasoning of DiStefano v.
8 Carozzi, Inc., 286 F.3d 81 (2d Cir. 2001) (per curiam), in which
9 we concluded that the termination of employment of an employee at
10 a meeting in New Jersey caused the employee injury in New York
11 State, because New York was where the employee lived and where he
12 performed the duties of his employment. From a policy
13 perspective, Penguin argues that
14 [t]he restrictive reading of the long-arm
15 statute under the line of cases followed by
16 the District Court would substantially -- and
17 unnecessarily -- stack the deck against the
18 authors, publishers and other intellectual
19 proprietors in New York in the accelerating
20 struggle against Internet piracy, allowing
21 pirates with the entire 21st-century arsenal
22 of digital infringement tools to shelter
23 behind a 19th-century personal jurisdiction
24 model based on their physical location.
25 Appellant's Br. at 14.
26 C. Legislative History of N.Y. C.P.L.R. § 302(a)(3)(ii)
27 The legislative history of N.Y. C.P.L.R. § 302(a)(3) is
28 of little assistance. The provision was adopted to fill a gap in
29 the New York Long-Arm Statute that was recognized in Feathers v.
30 McLucas, 15 N.Y.2d 443, 209 N.E.2d 68, 261 N.Y.S.2d 8 (1965).
31 There, the New York Court of Appeals declined to apply section
15
1 302(a)(2), which provides for jurisdiction over any person who
2 "commits a tortious act within the state," to a manufacturer
3 whose negligent construction of a gas tank in Kansas had caused
4 bodily injury in New York State. Id., 15 N.Y.2d at 460, 209
5 N.E.2d at 77, 261 N.Y.S.2d at 21 (internal quotation marks
6 omitted).
7 The following year, according to a Memorandum of the
8 New York Judicial Conference, the New York State Legislature
9 adopted section 302(a)(3) for the purpose of "broaden[ing] New
10 York's long-arm jurisdiction so as to include non-residents who
11 cause tortious injury in the state by an act or omission without
12 the state." Mem. of Judicial Conference, 1966 N.Y. Sess. Laws
13 2911 (McKinney) (as quoted in Reyes v. Sanchez-Pena, 191 Misc. 2d
14 600, 608, 742 N.Y.S.2d 513, 520 (N.Y. Sup. Ct. 2002)). According
15 to that memorandum, the amendment was intended to be "broad
16 enough to protect New York residents yet not so broad, even
17 though constitutionally feasible, as to burden unfairly non-
18 residents whose connection with the state is remote and who could
19 not reasonably be expected to foresee that their acts outside of
20 New York could have harmful consequences in New York." Id.
21 We have not found in the legislative history any
22 discussion of how to strike this balance in commercial tort cases
23 (much less Internet copyright infringement cases), with respect
24 to which the New York Court of Appeals has acknowledged that the
25 locus of injury is "not as readily identifiable as it is in torts
16
1 causing physical harm." Sybron Corp. v. Wetzel, 46 N.Y.2d 197,
2 205, 385 N.E.2d 1055, 1058, 413 N.Y.S.2d 127, 131 (1978).
3 Penguin advocates an approach that emphasizes
4 protection of New York residents or domiciliaries, while American
5 Buddha advocates an approach -- the one that persuaded the
6 district court -- that focuses on avoiding unjust burdens on non-
7 residents whose connection with the State may be tenuous or
8 remote. We think that deciding which approach better comports
9 with the intent of the New York Legislature is more appropriate
10 for the New York Court of Appeals than it is for us.
11 D. New York Courts' Interpretation of
12 N.Y. C.P.L.R. § 302(a)(3)(ii)
13 The New York Court of Appeals has never squarely
14 applied N.Y. C.P.L.R. § 302(a)(3)(ii) in the intellectual
15 property context. Lower New York courts that have addressed
16 section 302(a)(3)(ii) have not provided a clear indication of how
17 the Court of Appeals would apply the section to the case we are
18 presented with here.
19 It is settled New York law that the suffering of
20 economic damages in New York is insufficient, on its own, to
21 establish a "direct" injury in New York for N.Y. C.P.L.R.
22 § 302(a)(3) purposes. Fantis Foods, 49 N.Y.2d at 326, 402 N.E.2d
23 at 125-26, 425 N.Y.S.2d at 786-87 (rejecting jurisdiction based
24 on loss of overall sales where conversion of goods occurred en
25 route from Greece to Chicago); Sybron, 46 N.Y.2d at 205, 385
26 N.E.2d at 1058, 413 N.Y.S.2d at 131 (recognizing that courts have
17
1 concluded that "remote injuries located in New York solely
2 because of domicile or incorporation here do not satisfy CPLR 302
3 (subd. (a), par. 3)"); Lehigh Valley Indus. v. Birenbaum, 527
4 F.2d 87, 94 (2d Cir. 1975) ("[S]ection 302(a)(3) is not satisfied
5 by remote or consequential injuries such as lost commercial
6 profits which occur in New York only because the plaintiff is
7 domiciled or doing business here.").
8 From this premise, some New York courts have concluded
9 that the situs of injury is the location where the actions or
10 events associated with the injury took place. See, e.g., Hermann
11 v. Sharon Hosp., Inc., 135 A.D.2d 682, 683, 522 N.Y.S.2d 581, 583
12 (2d Dep't 1987) ("The situs of the injury is the location of the
13 original event which caused the injury, not the location where
14 the resultant damages are subsequently felt by the plaintiff."
15 (internal citations omitted)); Weiss v. Greenburg, Traurig,
16 Askew, Hoffman, Lipoff, Quentel & Wolff, P.A., 85 A.D.2d 861,
17 862, 446 N.Y.S.2d 447, 449 (3d Dep't 1981) ("[I]t has been held
18 that the situs of a nonphysical, commercial injury is where the
19 critical events associated with the dispute took place."
20 (internal quotation marks and citations omitted)).
21 But in cases in which something more than economic
22 injury is alleged, some New York courts have determined the situs
23 of injury to be the place where the plaintiff is located and
24 conducts business. Most prominently, in Sybron, the case in
25 which the New York Court of Appeals recognized the applicability
26 of section 302(a)(3) to commercial torts, the court decided that
18
1 domicile or incorporation in New York State alone was
2 insufficient as a basis for personal jurisdiction. It concluded,
3 however, that jurisdiction was appropriate where the plaintiff
4 had additional ties to the State, such as the presence of the
5 trade secrets and the threatened loss of customers here. Sybron,
6 46 N.Y.2d at 205, 385 N.E.2d at 1058, 413 N.Y.S.2d at 131.
7 The ties to New York State in Sybron were stronger than
8 those in the case at bar. Sybron involved the alleged loss of a
9 New York-specific customer base and the alleged acquisition of
10 trade secrets in New York. Id., 46 N.Y.2d at 205-06, 385 N.E.2d
11 at 1059, 413 N.Y.S.2d at 132. Its holding therefore does not
12 dictate the result of this appeal. But Sybron does raise a
13 reasonable likelihood that the New York Court of Appeals may
14 interpret the alleged wrong here -- which is analogous to a
15 commercial tort and involves both the presumptive presence of
16 intellectual property rights in the State, and the likely ability
17 of the plaintiff to foresee that the distribution of the
18 copyrighted material in issue will cause loss beyond that caused
19 by the initial unauthorized uploading of the copyrighted works --
20 to involve more than derivative economic harm within the State.
21 Penguin has alleged infringement not only through the copying of
22 its copyrighted work, but also through the unauthorized
23 "reproduction and distribution" of the works over the Internet.
24 Compl. ¶ 28. Penguin presented evidence that American Buddha had
25 offered the materials to its 50,000 users via the Internet free
26 of charge, and had provided assurances that downloading the works
19
1 would not constitute copyright infringement. Penguin has not
2 asserted the foreseeable loss of customers in New York, and
3 apparently for this reason the district court treated the alleged
4 infringement to be analogous to "an unauthorized photocopy of a
5 copyrighted book in Oregon or Arizona." Penguin, 2009 WL
6 1069158, at *4, 2009 U.S. Dist. LEXIS 34032, at *12. We note
7 nonetheless in the context of certifying a question to the New
8 York Court of Appeals that the allegation of distribution over
9 the Internet may be a factor in the Court's interpretation of the
10 statute in question.
11 E. Legal Arguments For and Against Finding New York
12 To Be the Situs of Injury
13 1. Legal Arguments in Favor of Deeming New York To Be
14 the Situs of Injury. Penguin's strongest legal argument would
15 appear to be an argument based on the logic this Court employed
16 in DiStefano. The question there was the location of the situs
17 of injury for section 302(a)(3) purposes where an employee who
18 lived and worked in New York was fired at a meeting held in New
19 Jersey. DiStefano, 286 F.3d at 82-83.
20 We concluded that to determine "whether there is an
21 injury in New York sufficient to warrant § 302(a)(3)
22 jurisdiction[, courts] must generally apply a situs-of-injury
23 test, which asks them to locate the original event which caused
24 the injury." Id. at 84 (internal quotation marks omitted).
25 "'This "original event" is, however, generally distinguished not
26 only from the initial tort but from the final economic injury and
20
1 the felt consequences of the tort.'" Id. (quoting Bank Brussels
2 Lambert v. Fiddler Gonzalez & Rodriguez, 171 F.3d 779, 791 (2d
3 Cir. 1999)). "[T]he original event occurs where the first effect
4 of the tort that ultimately produced the final economic injury is
5 located." Id. at 84-85 (internal quotation marks and ellipsis
6 omitted).
7 In Mr. DiStefano's case, the "original event" occurred
8 in New York because "the 'original event' [was] DiStefano's
9 experience of being removed from his job." Id. at 85.
10 "DiStefano experienced the 'first effect' of losing his job in
11 New York, even though he was fired in New Jersey." Id. Penguin
12 argues that similarly here, although the copying that allegedly
13 infringed its copyright occurred in Oregon or Arizona, Penguin
14 experienced the effect of the infringing conduct in New York,
15 where its business was located and its copyright was located for
16 present purposes. See, e.g., Appellant's Br. at 21 (alleging
17 that the injury "was experienced by Penguin in New York, where
18 its offices and personnel are located, and where its copyrights
19 are held"); cf. Calder v. Jones, 465 U.S. 783, 789-90 (1984)
20 (concluding that jurisdiction over Florida defamation defendants
21 in California satisfied Due Process standards because the
22 defendants wrote and edited article "they knew would have a
23 potentially devastating impact upon" the plaintiff, a California
24 resident).
25 Although we have never extended this logic to conclude
26 that there was jurisdiction in New York courts over a defendant
21
1 in an intellectual property dispute, district courts in this
2 Circuit have. See, e.g., McGraw-Hill Cos., Inc. v. Ingenium
3 Techs. Corp., 375 F. Supp. 2d 252, 256 (S.D.N.Y. 2005) ("The
4 torts of copyright and trademark infringement cause injury in the
5 state where the allegedly infringed intellectual property is
6 held.");5 Design Tex Group, Inc. v. U.S. Vinyl Mfg. Corp., No.
7 04 Civ 5002, 2005 WL 357125, at *1, 2005 U.S. Dist. LEXIS 2143,
8 at *4 (S.D.N.Y. Feb. 14, 2005) ("[B]ecause the plaintiffs (and
9 their intellectual property) are based in New York, the injury is
10 felt within the state no matter where the infringement takes
11 place.").6 Similarly, in Savage Universal Corp. v. Grazier
12 Constr., No. 04 Civ. 1089, 2004 WL 1824102, 2004 U.S. Dist. LEXIS
13 16088 (S.D.N.Y. Aug. 13, 2004), the district court found the
14 situs of injury under section 302(a)(3) to be New York State
15 where an out-of-state defendant committed trademark infringement
16 that affected a New York-based defendant's website through damage
17 to its goodwill, lost sales, or lost customers. Id., 2004 WL
18 1824102 at *9, 2004 U.S. Dist. LEXIS 16088, at *29-*30 (citing
5
American Buddha tries to distinguish this statement as
dictum because the defendant in McGraw-Hill had actual contacts
with New York. Those contacts are relevant to an inquiry under
section 302(a)(1), not section 302(a)(3), which is at issue here.
6
See also Royalty Network Inc. v. Dishant.com, LLC, 638 F.
Supp. 2d 410, 423 (S.D.N.Y. 2009); Mfg. Tech. Inc. v. Kroger Co.,
No. 06 Civ. 3010, 2006 WL 3714445, at *2, 2006 U.S. Dist. LEXIS
90393, at *5 (S.D.N.Y. Dec. 13, 2006); Mario Valente Collezioni,
Ltd. v. Confezioni Semeraro Paolo, S.R.L., 115 F. Supp. 2d 367,
376-77 (S.D.N.Y. 2000); Cello Holdings, L.L.C. v. Lawrence-Dahl
Cos., 89 F. Supp. 2d 464, 470 (S.D.N.Y. 2000).
22
1 Citigroup Inc. v. City Holding Co., 97 F. Supp. 2d 549, 568
2 (S.D.N.Y. 2000)).
3 Although, as noted, Penguin does allege copyright
4 infringement through the "distribution" of its copyrighted work
5 over the Internet, Compl. ¶ 28, Penguin does not specifically
6 allege the loss of customers or other direct harm in New York,
7 distinguishing this case from most of those cited, see, e.g.,
8 id.; Citigroup, 97 F. Supp. 2d at 568. But these cases can be
9 read to suggest that the injury from the infringement of an
10 intellectual property right committed outside of New York may be
11 a New York injury for section 302(a)(3) purposes if it adversely
12 affects the plaintiff and his intellectual property in New York.
13 2. Legal Arguments Against Deeming New York To Be the
14 Situs of Injury. Looking not to domicile or residence but to
15 lost business at the site of the allegedly infringing action
16 taken by the defendant, some other district courts in this
17 Circuit have concluded that injuries resulting from intellectual
18 property torts occur where the infringing action is taken. See,
19 e.g., Art Leather Mfg. Co., Inc. v. Albumx Corp., 888 F. Supp.
20 565, 568 (S.D.N.Y. 1995) ("A patent holder suffers economic loss
21 at the place where an infringing sale is made because the holder
22 loses business there."); Freeplay Music, Inc. v. Cox Radio, Inc.,
23 No. 04 Civ. 5238, 2005 WL 1500896, at *8, 2005 U.S. Dist. LEXIS
24 12397 at *24 (S.D.N.Y. June 23, 2005) ("In cases of commercial
25 torts, the place of injury will usually be located where the
26 critical events associated with the dispute took place. In this
23
1 case, the critical events are [the defendant's] alleged
2 unlicensed use of [the plaintiff's] recordings and compositions."
3 (internal quotation marks and citation omitted)). The district
4 court relied on this line of cases to conclude that Penguin's
5 injury occurred where the book was impermissibly copied, since
6 that is where the sale was lost. See Penguin, 2009 WL 1069158,
7 at *4, 2009 U.S. Dist. LEXIS 34032, at *11-*12.
8 V. Due Process
9 The question whether defining the situs of injury here
10 as New York so as to give rise to jurisdiction in New York over
11 Penguin's claims against American Buddha would violate American
12 Buddha's right to Due Process is beyond the scope of this appeal.
13 We do not, as a general matter, conduct the due process analysis
14 until we have first determined that there is personal
15 jurisdiction under New York's Long-Arm Statute. See Best Van
16 Lines, 490 F.3d at 242; Savin, 898 F.2d at 306.
17 Here, were we eventually to agree with Penguin,
18 contrary to the district court's decision, that the situs of
19 injury was indeed New York, the proper course would be to remand
20 to the district court to consider the remaining four factors for
21 personal jurisdiction under the long-arm statute. See LaMarca,
22 95 N.Y.2d at 214, 735 N.E.2d at 886, 713 N.Y.S.2d at 307 (setting
23 out five-part test for jurisdiction under section 302(a)(3)). At
24 least two of those factors -- that American Buddha reasonably
25 expected an injury to occur in New York and that American Buddha
26 derives substantial revenue from interstate or international
24
1 commerce -- were not analyzed by the district court. Penguin,
2 2009 WL 1069158, at *4, 2009 U.S. Dist. LEXIS 34032, at *13
3 ("[I]t is not necessary to explore whether plaintiff has met its
4 burden on the other elements necessary to establish jurisdiction
5 under Rule 302(a)(3)(ii), or whether the exercise of jurisdiction
6 would comport with due process."). Inasmuch as these issues
7 likely involve additional questions of fact, they would best be
8 decided by the district court, if necessary, in the first
9 instance.
10 VI. Certification to the New York Court of Appeals
11 The rules of this Circuit provide that "[i]f state law
12 permits, the court may certify a question of state law to that
13 state's highest court." 2d Cir. R. 27.2; see also Prats v. Port
14 Auth. of N.Y. & N.J., 315 F.3d 146, 150-51 (2d Cir. 2002). Our
15 certification to the New York Court of Appeals is discretionary,
16 see McCarthy v. Olin Corp., 119 F.3d 148, 153 (2d Cir. 1997), and
17 we have recognized several factors as guiding that discretion.
18 First, and most important, certification may be
19 appropriate if the New York Court of Appeals has not squarely
20 addressed an issue and other decisions by New York courts are
21 insufficient to predict how the Court of Appeals would resolve
22 it. See Kuhne v. Cohen & Slamowitz, LLP, 579 F.3d 189, 198 (2d
23 Cir. 2009); O'Mara v. Town of Wappinger, 485 F.3d 693, 698 (2d
24 Cir. 2007). As discussed above, there are two competing lines of
25 cases dealing with the issue here. The proper resolution of this
25
1 appeal depends on a determination as to which of those lines of
2 cases is correct.
3 Second, certification may be appropriate if the
4 "statute's plain language does not indicate the answer." Riordan
5 v. Nationwide Mut. Fire Ins. Co., 977 F.2d 47, 51 (2d Cir. 1992);
6 Colavito v. N.Y. Organ Donor Network, Inc., 438 F.3d 214, 229 (2d
7 Cir. 2006). Here, for the reasons discussed, we think that
8 neither the plain language nor the legislative history of section
9 302(a)(3) makes clear the location of the situs of injury in a
10 copyright infringement case.
11 Third, certification may be appropriate if a decision
12 on the merits requires value judgments and important public
13 policy choices that the New York Court of Appeals is better
14 situated than we to make. See Colavito, 438 F.3d at 229; Blue
15 Cross & Blue Shield of N.J., Inc. v. Phillip Morris USA, Inc.,
16 344 F.3d 211, 221 (2d Cir. 2003). Resolution of this appeal
17 requires deciding how the New York Legislature intended to strike
18 the balance between the protection of New York-based intellectual
19 property holders and the rights of defendants with few if any
20 apparent ties to New York beyond the availability of material
21 they have uploaded to a website out-of-state. The New York Court
22 of Appeals is better situated to ascertain the New York State
23 Legislature's intent than are we.
24 Finally, certification may be appropriate if the
25 questions certified will control the outcome of the case. See
26 O'Mara, 485 F.3d at 698 (analyzing earlier version of the Second
26
1 Circuit local rule governing certification). Here, resolution of
2 the certified issue will determine how we resolve this appeal --
3 if not necessarily whether jurisdiction will ultimately be found
4 appropriate in New York State. If the New York Court of Appeals
5 deems the situs of injury under the circumstances presented by
6 this case to be the location of the infringing conduct, we will
7 doubtless affirm the district court's judgement. If the Court of
8 Appeals decides the situs of injury to be the location of the
9 plaintiff and the intellectual property at issue, then the
10 district court's opinion must, with virtual certainty, be vacated
11 and we expect to remand for further proceedings.
12 Because all four factors weigh in favor of
13 certification, we hereby certify the question restated below.
14 CONCLUSION
15 For the foregoing reason, we certify the following
16 question to the New York Court of Appeals: In copyright
17 infringement cases, is the situs of injury for purposes of
18 determining long-arm jurisdiction under N.Y. C.P.L.R.
19 § 302(a)(3)(ii) the location of the infringing action or the
20 residence or location of the principal place of business of the
21 copyright holder?
22 As is our practice, we do not intend to limit the scope
23 of the Court of Appeals' analysis through the formulation of our
24 question and we invite the Court of Appeals to expand upon or
25 alter this question as it should deem appropriate. See
27
1 Kirschner v. KPMG LLP, 590 F.3d 186, 195 (2d Cir. 2009). For
2 example, we recognize that the presence of online libraries and
3 the Internet may have an impact on the Court of Appeals'
4 evaluation of the situs of injury and may figure in the Court's
5 analysis.
6 Pursuant to New York Court of Appeals Rule 500.17 and
7 United States Court of Appeals for the Second Circuit Rule 27.2,
8 it is hereby ORDERED that the Clerk of this Court transmit to the
9 Clerk of the Court of Appeals of the State of New York this
10 opinion as our certificate, together with a complete set of the
11 briefs, appendix, and record filed in this Court by the parties.
12 We direct the parties to bear equally any fees and costs that may
13 be imposed by the New York Court of Appeals in connection with
14 this certification. This panel will retain jurisdiction of the
15 appeal after disposition of this certification by the New York
16 Court of Appeals, and after the Court of Appeals judgment should
17 it choose to accept this certification.
28