Plaintiff Susan Tierney Cockburn filed suit (pdf) in the Western District of Washington against five out of state defendants – one manufacturing defendant and four retail defendants. The defendants filed motions to dismiss the complaint for lack of personal jurisdiction and to dismiss plaintiff’s Lanham Act (federal trademark) and state law claims for failure to state a claim upon which relief can be granted under Fed. R. Civ.P. 12(b)(6). The defendants also questioned whether plaintiff’s works were copyrighted, although that does not appear to have been part of the formal motion. Judge Robert S. Lasnik granted the motion to dismiss in part and denied it in part.
Facts. Plaintiff is a professional author and artist in Redmond, Washington. She creates floral art with paper and three dimensional paper flowers for use in crafts and hobbies. She “developed a unique line of paper punches to enhance her paper floral art and three dimensional paper flowers.” (Order pdf page 2). Plaintiff registered copyrights for two books: Paper Bouquet and The Paper Garden – Summer Blooms.
Defendant SWS Industries, Inc. is an Illinois corporation that manufactures punches used in office products, industrial supply/hardware and crafts. An SWS representative contacted plaintiff in 2009, asking whether plaintiff would work with it on augmenting its existing paper punches. SWS later presented plaintiff with a contract to purchase and manufacture her floral designs, but the parties failed to come to an agreement. Plaintiff alleges that SWS created infringing works which it sold to Internet and retail customers all over the United States. Plaintiff alleges that the retail defendants sold SWS’s infringing products either online or through retail stores. The retail defendants are Archiver’s, a Minnesota corporation, Notions, a Michigan corporation, Moore, a Florida corporation, and CreateForLess, LLC, an Oregon limited liability company. The defendants are not licensed to do business in Washington state and do not have employees or a physical presence in Washington.
Plaintiff claimed copyright infringement, violation of the Lanham Act, 15 USC §1125(a), violation of Washington’s Consumer Protection Act, and violation of Washington trade dress and trade name protection. She sought a constructive trust and an accounting, both of which are state law claims.
Personal Jurisdiction. The court undertook the same analysis described in my June 1, 2011, post Personal Jurisdiction Found Lacking in Copyright Infringement Action. Washington State’s long arm statute extends to the limit of the Due Process Clause.
For a forum state to have personal jurisdiction over an out-of-state defendant, that defendant must have certain minimum contacts with the forum state, such that the maintenance of the suit does not offend traditional notions of fair play and substantial justice.
(Order pdf page 5).
The court set out the three-part test used in the Ninth Circuit to analyze specific jurisdiction:
- The non-resident defendant must purposefully direct his activities or consummate some transaction with the forum or resident thereof; or perform some act by which he purposefully avails himself of the privilege of conducting activities in the forum, thereby invoking the benefits and protections of its laws;
- the claim must be one which arises out of or relates to the defendant’s forum-related activities; and
- the exercise of jurisdiction must comport with fair play and substantial justice, i.e. it must be reasonable.
(Order pdf page 5).
The court indicated that “[i]n tort cases, courts typically inquire whether a defendant purposefully directs his activities at the forum state, applying an ‘effects’ test that focuses on the forum in which the defendant’s actions were felt, whether or not the actions themselves occurred within the forum.” (Order pdf page 6). Tort claims include a claim for willful copyright infringement.
The first part of the above three-part test, purposeful availment, has its own three part test: “the defendant allegedly must have (1) committed an intentional act, which was (2) expressly aimed at the forum state, and (3) caused harm, the brunt of which is suffered and which the defendant knows is likely to be suffered in the forum state.” (Order pdf page 6).
The Ninth Circuit has approved a sliding scale analysis in addition to the effects test: “[T]he likelihood that personal jurisdiction can be constitutionally exercised is directly proportionate to the nature and quality of commercial activity that an entity conducts over the Internet.” (Order pdf page 6).
The court ruled that the defendant retailers conduct with Washington involved the sale of a small number of non-infringing products and was “insufficient to show that they directed their activity towards Washington in a substantial way.” (Order pdf page 7). The retail defendants’ conduct was also found not to have been expressly aimed at the forum, as the retail defendants did not previously know of plaintiff’s existence, her dispute with SWS or her residence in Washington state. The court granted the retail defendants’ motion to dismiss for lack of personal jurisdiction.
SWS argued that exercising personal jurisdiction over it would be unreasonable. “Defendant must present a compelling case that the presence of some other considerations would render jurisdiction unreasonable.” (Order pdf page 8). The seven factors for determining reasonableness are:
- the extent of the defendants’ purposeful contacts;
- the burden on defendant of having to defend in Washington;
- the extent to which jurisdiction conflicts with the sovereignty of the defendant’s resident state;
- Washington’s interest in adjudicating the dispute;
- which forum is the most efficient for resolution of the dispute;
- plaintiff’s interest in choosing the Washington forum; and
- the existence of an alternative forum to adjudicate plaintiff’s claims.
The court discussed the factors one by one. It found that factors one, three, four and six weigh in favor of the plaintiff and factors two, five and seven weigh in favor of the defendant. SWS did not present a compelling case that jurisdiction in Washington State is unreasonable. The court denied SWS’s request to dismiss for lack of personal jurisdiction.
Copyright. The defendants questioned whether plaintiff’s works were copyrighted, but did not provide support for that argument. Defendants next argued that plaintiff’s designs become a useful article when used with a paper punch. However, the designs can be cut with scissors or drawn. The court did not think they were useful articles. Defendants also argued that plaintiff’s floral designs are scenes a faire, since their origins are objects of nature. The court ruled that this doctrine is inapplicable, since plaintiff did not claim copyright protection for the shape of certain flowers, but only for the designs of those flowers as rendered in her books.
Lanham Act claim. Plaintiff argued that SWS’s products used a trade dress confusingly similar to her products, in violation of the Lanham Act, 15 U.S.C. §1125(a). Defendants argued that plaintiff’s Lanham Act claims duplicated her copyright claims and failed as a matter of law. The court stated that “parallel copyright and Lanham Act claims are not per se improper” and that courts limit the application of trademark law when copyright laws “provide an adequate remedy.” (Order pdf page 12). The court indicated that plaintiff’s Lanham Act claim includes other elements that are not necessarily compensable under copyright law, such as a false designation of origin and/or sponsorship and SWS passing off its products as plaintiff’s. The court stated that “courts typically resolve the issue of whether the Lanham Act and copyright claims overlap at the summary judgment stage rather than on a motion to dismiss.” (Order pdf page 13). The court denied defendants’ motion to dismiss the Lanham Act claim.
State law claims. The defendants argued that plaintiff’s state law claims are preempted by the Copyright Act. Preemption was discussed in my May 10, 2011, post Ninth Circuit Upholds Script Writer’s Implied Contract Claim under California State Law. The two part preemption test adopted by the Ninth Circuit is
- courts must first determine whether the subject matter of the state law claim falls within the subject matter of copyright as described by 17 U.S.C. §§102 and 103, and
- courts must determine whether the rights asserted under state law are equivalent to the rights contained in 17 U.S.C. §106.
To survive preemption, the state law claim must include an extra element that is not protected by the Copyright Act. The court ruled that plaintiff’s Consumer Protection Act (CPA) claim does not include the required extra element and dismissed that claim as preempted. Of note to attorneys practicing in the Western District of Washington, the court stated that
[P]laintiff’s response does not address her CPA claim, which the Court construes, pursuant to Local Rule 7, as a concession that defendants’ arguments regarding that claim have merit.
The court found that plaintiff’s Washington State trade dress claims are not preempted, for the same reason the Lanham Act claims are not preempted.
The court found that plaintiff’s state law trade name claim based on words used by plaintiff in her copyrighted works is preempted by copyright law.
Plaintiff’s state law trade name claim based on the alleged misuse of her name by the defendants is not preempted by copyright law. “A person’s name or likeness is not a work of authorship within the meaning of 17 U.S.C. §102.” (Order pdf page 15).
Plaintiff’s state law constructive trust claim was dismissed as preempted, as it was based on defendants’ violation of plaintiff’s copyrights.
This case is Susan Tierney Cockburn v. SWS Industries, Inc., et al., Case No. C10-1566 RSL, Western District of Washington at Seattle.
