Copyright Act Does Not Apply to Proposed Sale of Allegedly Unlawful Copy of Sculpture to US Buyer Because All Relevant Conduct Occurred Outside the US and No Infringing US “Predicate Act” Otherwise Exists

Noland v. Jannsen, US District Court for the Southern District of New York, March 8, 2019

Plaintiff Cady Noland is an artist whose work includes a wooden sculpture in the form of the façade of a log cabin. The work had been placed outdoors and the owner replaced many of the parts that had deteriorated from exposure. The defendants, two German art galleries, the owner of one of the galleries, and a German art collector, tried to sell the repaired work, and Noland sued them for copyright infringement and other violations of law, claiming the existing sculpture was an “unauthorized copy” of the original.

The Court addressed the question whether the US copyright statute applied to conduct—including the repair of the sculpture and the defendants’ continuing efforts to sell the work—occurring entirely in Germany. It observed that the Copyright statute has no extraterritorial applicability but noted an exception where an act of infringement in the US has permitted additional unauthorized copying to occur in other countries. Noland first suggested that the defendants’ purchase of wood in the US for the refurbishing of the sculpture satisfied this test but the Court rejected the argument: Although certainly facilitating the changes to the sculpture, the purchase was not itself an act of infringement. The Court also disagreed that the defendants’ earlier efforts to sell the sculpture to an American collector (for an agreed-upon price of USD 1.4 million) established a sufficient link to the US, noting specifically that the work never traveled to the US and that the defendants were not in the US when they dealt with the potential buyer. The Court thus dismissed the copyright claim, finding that the statute did not apply because only ex-US conduct had been alleged.

No Personal Jurisdiction in Florida Over Australian Manufacturer of Motorcycle Parts Where Its Only Connections with The US Were (i) a Website Operated Globally that Did Not Account for Substantial Sales in Florida and (ii) California-Based US Distributors

Performance Industries Manufacturing, Inc. v. Vortex Performance Pty Ltd., US District Court for the Middle District of Florida, January 2, 2019

This is a trademark dispute between an American and an Australian seller of motorcycle parts. The Court observed that it could assert personal jurisdiction over the non-US defendant only if permitted under the laws of both the State of Florida and the US. As to the former, the Court rejected the argument that the defendant’s website constituted the carrying on of business in Florida or was an act that caused injury in Florida: Although the website permitted Florida residents to make purchases and secure deliveries in the State, evidence of “substantial” Florida sales did not exist.

As to US law, the Court stated that the Due Process Clause of the US Constitution required that the claim “arise out of or relate to” at least one of the defendant’s contacts with Florida, that defendant have been shown to have “purposely availed itself” of the “privilege of conducting activities” in the State, and that requiring the defendant to participate in the case otherwise would “comport with traditional notions of fair play and substantial justice.” The Court found the first requirement satisfied “in only the most attenuated manner” because “any website selling goods worldwide may be accessed in Florida.” In trademark cases, the Court stated that the second requirement should be judged under the “effects test,” in which the Court determines whether a tort “(1) was intentional; (2) was aimed at the forum state; and (3) caused harm that the defendant should have anticipated would be suffered in the forum state.” Assuming trademark infringement is an “intentional” tort, it was not “aimed at Florida” because the defendant had no contacts with Florida other than through the website it operates worldwide. The fact that the defendant’s products “might have found their way to Florida” through distributors (three motorcycle shops based in California) was not relevant because the distribution agreement did not target Florida specifically and the defendant did not otherwise control distribution so closely that it would be responsible for the distributor’s decision to sell products in the state.

[Editor’s Note: The Performance Industries Manufacturing case also appears in the Personal Jurisdiction/ Forum non Conveniens section of this Report.]

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