IP Law Daily Infringement claims over Welsh Government’s use of Dylan Thomas photos dismissed
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Thursday, March 17, 2016

Infringement claims over Welsh Government’s use of Dylan Thomas photos dismissed

Infringement claims over Welsh Government’s use of Dylan Thomas photos dismissed

By Thomas Long, J.D.

Copyright infringement claims against the Welsh Government for using two photos of the poet Dylan Thomas in a tourism promotion campaign have been dismissed by the federal district court in New York City for improper service and improper venue. In addition, infringement claims against six media companies that reproduced the photos on websites and in print publications were dismissed for lack of personal jurisdiction. Merely displaying the allegedly infringing photos on the Internet did not make New York the site of the injury to the copyright owners, for purposes of venue and jurisdiction, the court said (Pablo Star Ltd. v. The Welsh GovernmentMarch 16, 2016, Oetken, J.).

Alleged infringement. The copyrights to the photos were owned by related media companies organized and registered under the laws of Ireland and the United Kingdom. The Welsh Government—a political subdivision of the United Kingdom—operated a business enterprise called “Visit Wales,” which was intended to encourage tourism and to promote Wales as a tourist destination. According to the plaintiffs, the Welsh Government published, displayed, and distributed copies of the photos in advertisements, publications, and other promotional materials that were specifically targeted toward the United States in general and New York residents in particular. These materials included the Visit Wales website, as well as a downloadable map and guide depicting a “Dylan Thomas Walking Tour of Greenwich Village, New York” that included one of the photos. The Welsh Government allegedly provided unauthorized copies of the photos to media companies—the Tribune Content Agency, LLC, the Pittsburgh Post-Gazette, E.W. Scripps, Co., the Journal Media Group, Inc., Treasure Coast Newspapers, the Richmond Times Dispatch, and the Miami Herald Media Co. (the “publisher defendants”)—which the publisher defendants reproduced and displayed on their respective websites and in print publications.

Service of process. The Foreign Sovereign Immunities Act (FSIA) provided the only means for effecting service of process on a foreign state. The first method provided for by the FSIA was by delivery of a copy of the summons and complaint in accordance with a special arrangement for service. The plaintiffs contended that they served the Welsh Government under a special arrangement. The plaintiffs submitted an email exchange between counsel for the Welsh Government and the plaintiffs’ counsel, in which the Welsh Government allegedly instructed the plaintiffs to effect service according to the requirements of the 1947 UK Crown Proceedings Act. The email stated that counsel did not have authority to accept service, and process should be served on the Welsh Ministers, addressed to the Director of Legal Services.

In the court’s view, the best reading of the email was that the Welsh Government’s counsel directed the plaintiffs’ counsel to comply with service rules under U.K. laws, not that counsel came to an agreement as to a special arrangement for service. The government’s counsel’s disclaimer of authority to accept service, in fact, indicated that counsel lacked the power to agree to such an arrangement. Therefore, the plaintiffs failed to strictly adhere to the terms of the FSIA, and the claims were dismissed for improper service.

Personal jurisdiction over publisher defendants. The Miami Herald Media Co., the Richmond Times Dispatch, Treasure Coast Newspapers, E.W. Scripps, Co., Journal Media Group, and the Pittsburgh Post-Gazette asserted that the court lacked personal jurisdiction over them. There were no facts alleged that would establish general jurisdiction, the court said. None of the publisher defendants were incorporated in, or had a principal place of business in, New York. Nor were their contacts with New York so substantial that any of there were “essentially at home” in New York.

The plaintiffs also failed to establish specific jurisdiction. Nothing indicated that the defendants’ alleged wrongdoing caused injury to anyone in New York. The plaintiffs were foreign companies and not New York copyright owners. Even if the plaintiffs conducted some business in New York, they did not allege that they “resided” there. Even though the alleged infringement was conducted via the World Wide Web, and the defendants’ websites could be accessed by New York residents, the plaintiffs still were required to demonstrate a nonspeculative and direct New York-based injury to its intellectual property in order to establish specific personal jurisdiction. To the extent that the alleged infringement caused injury in any single place, the location of that injury was not New York, the court said. Accordingly, the motion to dismiss for lack of personal jurisdiction was granted.

Venue. The Welsh Government also moved to dismiss on the ground of improper venue. The plaintiffs argued that venue was proper because a substantial part of the alleged copyright infringement occurred in the Southern District of New York. However, they did not allege that any of the specific conduct at issue occurred in the district, let alone a “substantial part” of it. Neither the plaintiffs nor the Welsh Government resided in the United States; the only concrete infringing materials identified by the plaintiffs were materials that were available online. The fact that infringing material was accessible online in a jurisdiction was insufficient to establish that the infringement occurred in the district for purposes of venue, the court said. Therefore, the claims against the Welsh Government were dismissed for this additional reason.

The case is No. 1:15-cv-01167-JPO.

Attorneys: Kevin Patrick McCulloch (Nelson & McCulloch LLP) for Pablo Star Ltd. and Pablo Star Media Ltd. Richard James Oparil (Porzio Bromberg & Newman, P.C.) for Gracenote d/b/a Tribune Media Service and Visit Wales.

Companies: Pablo Star Ltd.; Pablo Star Media Ltd.; Gracenote d/b/a Tribune Media Service; Visit Wales

MainStory: TopStory Copyright TechnologyInternet NewYorkNews

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