Brayton Purcell v. Recordon: Expanding Jurisdiction over Website Operators in Copyright Infringement Cases

The Ninth Circuit essentially held that a website operator accused of copyright infringement can be hailed into court in the copyright owner’s home venue if the infringer knew that the copyright owner resided there when he infringed. In Brayton Purcell LLP v. Recordon & Recordon, ___ F.3d ____, 2009 WL 2383035, No. 07-15383 (9th Cir., Aug. 5, 2009), the 9th Circuit held that venue was proper in the Northern District of California in a case brought by a Northern California law firm against a Southern California law firm for infringement of the Northern California firm’s website. Even though the Southern California firm only sought prospective clients in the San Diego area and did not do business in Northern California, the Court found the northern venue proper because the southern firm “targeted” the northern firm by specifically using its website content. The decision, if it holds up and is adopted by other courts, could have a dramatic impact on copyright litigation.

BACKGROUND

Brayton Purcell is a 50-member law firm based just north of San Francisco, California. Brayton markets itself as a leader in elder abuse law, among other areas of law. The firm maintains an extensive website, copyrighted in 2002, that provides information on elder abuse law.

In 2004, Recordon and Recordon, a two-member law firm based in San Diego, hired a web design company, Apptomix, to add an elder abuse section to its website. The section the web company added, according to the court, “consisted entirely of material copied verbatim from, and without attribution to, Brayton Purcell’s own website.”

When Brayton discovered Recordon’s site, it sued the small firm in the Northern District of California for copyright infringement, unfair competition, false advertising, and common law misappropriation. Recordon moved to dismiss on various grounds, including lack of personal jurisdiction or improper venue, arguing that its practice area was limited to Southern California and that it has never had clients in Northern California, and that its website was passive in nature. Recordon also claimed that it never conducted business, owned any property, or had any other business connections to the Northern California area.

But the district magistrate judge rejected those motions. The parties went to binding arbitration, and the arbitrator found in favor of Brayton – the district court entered an order requiring both Recordon and Apptomix to pay a combined $184,000 in damages and legal fees. Recordon appealed the district court’s denial of its motion to dismiss on jurisdictional grounds, but in a split decision, the Ninth Circuit found that jurisdiction was proper. Brayton Purcell LLP v. Recordon & Recordon, ___ F.3d ____, 2009 WL 2383035, No. 07-15383 (9th Cir., Aug. 5, 2009).

Infringing on a forum resident’s copyright could justify venue in that forum

In copyright cases, venue is proper where “the defendant or his agent resides or may be found.” 28 U.S.C. section 1400(a). The operator of a website, even a “passive” one, can be sued in a district if it (1) commits an intentional act, (2) expressly aimed at the forum, (3) causing harm that the defendant knew would likely be suffered in the forum. Calder v. Jones, 465 U.S. 783 (1984). A party “expressly aims” his acts at a forum when he purposefully directs or targets his activity in a substantially way at the forum.

In Brayton, the second element of “targeting” was the key issue in the case. In a 2-1 decision, the Ninth Circuit panel determined that “Recordon individually targeted Brayton Purcell, a Forum resident” by making “commercial use of Brayton Purcell’s copyrighted material for the purpose of competing with Brayton Purcell for elder abuse clients.” Brayton Purcell LLP v. Recordon & Recordon, 2009 WL 2383035, *4. Even though Recordon claimed that it only targeted Southern California clients, that was irrelevant to the majority because Recordon targeted a forum resident (Brayton).

The majority easily determined that Recordon committed an intentional act aimed at the forum when it published an infringing elder law section on its website. However, the court noted that merely maintaining the passive website alone does not satisfy the “express aiming” prong of the test. Rather, personal jurisdiction comes from operating a passive website along with “something more” that directly targets the forum. Id. at *4-5.  In this case, Recordon’s willful, deliberate, and/or knowing use of Brayton’s copyrighted material, placing the firm in direct competition with Brayton, was that “something more.” Id. at *5.

As far as injury, the court held that Recordon should have known that prospective clients would likely be confused about which firm had plagiarized from the other and might wrongfully conclude that Brayton was the plagiarizer, which could harm its business reputation and goodwill and decrease its business and profits. Id. Because all three elements were met, the panel majority found a sufficient basis to confer specific personal jurisdiction and venue in the Northern District.

In his dissent, Judge Stephen Reinhardt found Recordon’s conduct insufficient to confer jurisdiction and venue, saying “the only fact linking Recordon & Recordon’s actions to the Northern District was its knowledge of Brayton Purcell’s residence in that district.” Id. at *6. Judge Reinhardt expressed dismay at the slippery slope that the majority created, arguing that finding “express aiming” in these circumstances leaves every website operator exposed to the possibility that “he will be hailed into far-away courts based upon allegations of intellectual property infringement, if he happens to know where the alleged owner of the property rights resides.” Id. at *8. Judge Reinhardt concluded that “due process and basic principles of fairness prohibit such expansive exercise of personal jurisdiction.” Id.

CONCLUSION

The 9th Circuit’s Brayton likely does not have a significant impact on Recordon & Recordon. If venue and jurisdiction had been dismissed, and the case was moved to the Southern District, chances are that Recordon and its website designer would still have the same damages to pay in the end.

But the opinion has potentially dramatic consequences for future copyright infringement litigants. Right now, the case only has precedential value in the 9th Circuit, and it may even be rejected by future 9th Circuit panels. But if it holds up and is adopted by additional courts, the ruling would make likely result in an increase in copyright infringement cases filed—copyright owners would find it much easier and cheaper to file infringement cases because they could file the case in their own home forum. On the flip side, it would be far more difficult and expensive for defendants to defend copyright cases that are filed far away from their home forum, likely resulting in more settlements. Abuse of litigation may increase as a result. It remains to be seen if the Brayton result holds up.

As a side note, Recordon claimed that it was unaware of the infringement until the dispute began because the entire infringement was carried out by Apptomix. In reality, web designers often are unaware of copyright laws and other laws impacting the sites they design – the ultimate responsibility for infringement is on the client, especially if that client is a law firm. Lawyers should advise their clients to check outsourced sites for potential infringement when they are complete before they make them live in order to avoid liability.

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Olivier Taillieu

Jeff Zuber

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