15 Cardozo Arts & Ent. L.J. 153

Cardozo Arts and Entertainment Law Journal

1997

The Fourth Annual Herbert Tenzer Distinguished Lecture in Intellectual Property

*153 COPYRIGHT WITHOUT BORDERS? CHOICE OF FORUM AND CHOICE OF LAW FOR

COPYRIGHT INFRINGEMENT IN CYBERSPACE

Jane C. Ginsburg [FNa]

Copyright 1997 Yeshiva University; Jane C. Ginsburg

I. Introduction

I stress the question mark in the title of this paper. Here is the problem: claims of copyright infringement are arising out of the communication of works over digital networks such as the Internet. These networks are indifferent to national borders. But copyright owners today pursue infringement claims before courts and under legal rules whose competencies are territorial. How does one reconcile the ubiquity of the infringement with the boundaries of adjudication?

To illustrate the problem, let me begin with a true story. Former French President Francois Mitterand died in January 1996. Within a few days of his death, his former personal physician published a memoir, titled Le Grand Secret (The Big Secret). The doctor disclosed that the cancer that ultimately killed Mitterand had already metastasized when Mitterand first assumed the presidency. Indeed, the doctor claimed, toward the end of his second seven- year term, Mitterand was no longer able to exercise the functions of his office. The book's publication drew Mitterand's family's ire; the family invoked the late President's post-mortem right of privacy under French law to obtain a court order against the book's dissemination. Within days of its publication, the book was withdrawn from circulation.

Before every copy disappeared from bookstore shelves, however, the entrepreneur of a "cyberspace cafe" in a provincial French city acquired a copy, scanned all 190 pages, and posted the image files to an Internet site. Patrons of his cafe could log onto the site, as could remote users elsewhere in France who enjoyed Internet access. The event proved to be the best publicity the Internet *154 could have received in France. More than 30,000 people simultaneously tried to access the site, provoking a "crash" of telephone service in eastern France. Faced with threats from Mitterand's family, the entrepreneur declared that if pursued, he would simply delete the material from the French server, and send his files to a website in the United States. [FN1]

So far, this story lacks a role for the copyright owner. In real life, the author and the publisher were caught in the middle. The entrepreneur's actions clearly violated their rights under French copyright law, notwithstanding his self-serving declarations that his acts fell within a juridical void. The author's and publisher's difficulty was not with the copyright law, it was with the politics of the situation. They, after all, were contesting the withdrawal of the book. While the entrepreneur had treated the copyright cavalierly, he had also eluded the censorship that the late President's family had so far succeeded in imposing.

But suppose that the entrepreneur had uploaded his files to a U.S. website, and that the French copyright owners had sought to prevent dissemination of the work in the United States? Or that the entrepreneur uploaded the files to a United Kingdom website, and the copyright owners sought to prevent the dissemination from the United Kingdom? (Le Grand Secret was in fact found on websites in the United States, Canada, and the United Kingdom.) Whom would the copyright owner pursue? In what forum (fora)? And what law(s) would apply?

The implications of this scenario contest a central commonplace of international copyright law. Traditionally copyright protection has been territorial. That is, national law will apply to acts of infringement committed in a particular country, regardless of the national origin of the work infringed. The principal multilateral copyright conventions aim to promote international exchange of works of authorship by mandating the nondiscrimination rule of "national treatment." While promoting the permeability of national boundaries by copyrighted works, this rule also preserves national sovereignty by confining any country's copyright regime to local borders. But the concept of territoriality becomes elusive when the alleged infringements are accomplished by means of digital communications originating offshore. Traditional international copyright rules seem to presume that international *155 infringements will occur sequentially and slowly; but digital networks make possible multinational infringements that are simultaneous and pervasive. As a result, it may be time to rethink this basic rule of international copyright.

The disjunction between territorial treatment of copyright claims and the ubiquity of cyberspace has led some commentators to urge abandonment of landlocked notions of judicial and legislative competence. Since digital communications resist grounding in particular fora, or governance by individual national laws, these writers contend it would be best to devise a cyberian legal system that would supply cyber-specific substantive copyright law, and/or virtual dispute settlers whose competence--and whose determinations--would transcend national borders. [FN2]

My analysis will be more earthbound. This is not to belittle the important ongoing efforts to achieve international harmony of substantive copyright rules. [FN3] Nor is it in any way to disparage the virtual magistrate concept, under which parties (especially copyright holders and on-line service providers) would remit their disputes to on-line arbitrators. [FN4] Rather, as a practical matter, I doubt that either of these approaches will immediately displace national disparities in copyright rules or adjudication in national courts. As a result, I will consider how courts may apply existing principles of judicial and legislative competence to resolve as fully as possible in a single forum a claim of multinational copyright infringement occurring through cyberspace. To keep an admittedly complex inquiry relatively simple, I will limit the focus of the analysis to U.S. legal concepts of judicial and legislative competence. I acknowledge, however, that U.S. concepts may sometimes differ significantly from those applied in other common law or civil law countries. [FN5]

II. Choice of Forum

Recall our story of the posting of Le Grand Secret to websites in *156 the United States and the United Kingdom. The copyright owner's goal in pursuing an infringement action is to bring as many parties and claims as possible before a single forum. Can the French publishers obtain personal jurisdiction in a U.S. court over the French national that originated the communication? Over the operator of the U.S. website? Over the operator of the U.K. site? Over the commercial on-line service (if any) that carries the website? (The question whether, on the merits, the website operator or on-line service would be liable for direct or secondary copyright infringement is a different matter. For present purposes, we are concerned with whether that entity can be haled before a U.S. court.)

A. Jurisdiction Based on Defendant's Domicile or the Place or Origin of the Harm

To address this question, it may be helpful to recall some general principles of judicial competence in the United States. First, although jurisdiction over the subject matter of copyright claims is exclusively federal, [FN6] federal courts look initially to the law of the forum state to supply the rules of jurisdiction over the parties. [FN7] As a general matter, a defendant may be sued at its domicile or principal place of business, regardless of whether or not the claim arose there. [FN8] Thus, for example, were the French publishers to initiate their copyright action against CompuServe in Ohio, or against America Online ("AOL") in Virginia, the Ohio or Virginia federal court would have jurisdiction over those parties. Moreover, because the court would be asserting general jurisdiction over those parties, it would have power to hear not only claims arising out of the U.S. distribution of the copyrighted work, but also claims arising out of the distribution of the work in other countries. (What law applies to extra-U.S. distribution is a matter I will take up in a later section of this Article.) But what about the website operators *157 (if those entities are different from an on-line service and are not residents of Ohio or Virginia) and the French national?

A second basis of judicial competence focuses on the place of the harm. The place of harm can be understood as either the place of generation of the harm or the locations of its impact. Under the former characterization, the non- resident defendants could be subject to suit at the point of origin of the communication. [FN9] This raises the problem of localizing the origin of the communication. Under one view, the communication of Le Grand Secret originated in Besancon, France, whence the cybercafe entrepreneur sent it to the U.S. and U.K. websites. Economically, however, this point of origin seems rather fortuitous: the communication does not become accessible (and thus economically threatening) until it has been received at the website. The alleged harm is caused by the public availability of the work for access and downloading from the website, not from the home or cafe computer of the French national (who, in any event, deleted it from his server). [FN10] From the perspective of the members of the public seeking to obtain Le Grand Secret, the website is the distribution center for the work. [FN11] Thus, jurisdiction in a U.S. court over the website operator and over the foreign national who deliberately sent the work to that site would be proper at the U.S. location of the server. The territorial scope of the claim would cover not only distributions of the work to U.S. users, but distributions to foreign users who access and download from the U.S. website. (Again, choice of law is another matter.)

B. Long-Arm Jurisdiction

This brings us to the final basis of judicial competence: the forum as the place of impact of the harm. In our hypothetical, the party over whom the copyright owner would be asserting this basis of personal jurisdiction in a U.S. court would be the U.K. website *158 operator. Here, unlike the case of the U.S. website operator, there is no U.S. "distribution center." But there could be receipt in the United States, assuming U.S. users contacted the U.K. site, rather than the U.S. site, in order to obtain the work. In any event, once a work is on the web, it is available all over the world, whatever the physical location of the server. Is this availability of material sufficient to justify exercise of personal jurisdiction over the non-U.S. site operator?

1. Jurisdiction over the parties

The answer depends first on constitutional limitations on judicial competence. The constitutional limits are generous: it suffices for assertion of specific jurisdiction that defendant have "certain minimum contacts with [the forum] such that the maintenance of the suit does not offend "traditional notions of fair play and substantial justice."' [FN12] There will be "minimum contacts" with the forum if there is "some act by which the defendant purposefully avails itself of the privilege of conducting activities within the forum State, thus invoking the benefits and protections of its laws." [FN13]

For constitutional purposes, then, the question would be whether making copyrighted works available to users in the forumfor viewing and downloading is tantamount to purposefully availing oneself of the privilege of conducting activities in the forum. If we were talking about traditional distribution of infringing hard copies or traditional broadcasting to the forum, the answer, I believe, would clearly be "yes." [FN14] For distributions through cyberspace that do not specifically target the forum, the defendant's relationship to the forum may be similar to that of a foreign defendant who merely injects a product into the "stream of commerce." That act alone may not suffice. [FN15] On the other hand, even if the defendant has not specifically targeted the forum, the defendant knows that "[b]y simply setting up, and posting information *159 at [ ] a website in the form of an advertisement or solicitation, one has done everything necessary to reach the global [I]nternet audience," [FN16] and thus has "purposefully availed" oneself of the benefits of each forum from which one hopes to attract customers.

A recent trademark infringement case in the Southern District of New York affords an example of the "mere injection" approach to Internet postings. The case involved a Missouri website that advertised a local jazz club called the Blue Note. The website was accessible in New York, where the better-known plaintiff Blue Note jazz club is located. The judge held that "[c]reating a site, like placing a product into the stream of commerce, may be felt nationwide--or even worldwide--but, without more, is not an act purposefully directed toward the forum state." [FN17] In that case, the court stressed that Internet users could not purchase tickets to shows at the Missouri Blue Note through the website. To buy tickets or see a show, New Yorkers would have to travel to Missouri (although they could order tickets from New York via the defendant's 800 number). Thus, the court concluded, the website advertised to New Yorkers (and to anyone else with Internet access), but did not initiate a transaction via the web with these users.

By contrast, in another recent Internet-related trademark infringement case, a federal district court in Connecticut held that the minimum contacts standard was met when an out of state software producer's website was accessible to Connecticut residents, and invited them to call an 800 number to place orders. [FN18] The Connecticut court did not inquire whether any 800 number transactions had taken place, or even if Connecticut residents with Internet access had in fact logged onto defendant's site. The potential for access to and transactions from the forum apparently sufficed.

In the same vein, while a Missouri court faced with another Internet trademark infringement controversy took evidence on the number of "hits" the defendant's site had received from Missouri, the court's disposition rested more on the potential of the Internet as a marketing tool to the forum, than on the quantifiable in-state *160 impact of the website. The court stressed that "the nature and quality of contacts provided by the maintenance of a website on the [I]nternet are clearly of a different nature and quality than other means of contact with a forum such as the mass mailing of solicitations into a forum." [FN19] Or, as another district court recently concluded, a commercial website operator "should not be permitted to take advantage of modern technology through an Internet Web page and [CompuServe] forum and simultaneously escape traditional notions of jurisdiction." [FN20]

Another federal district court has assessed and attempted to rationalize these decisions by distinguishing "passive Website[s]" such as the Missouri Blue Note's from interactive sites either "involving the knowing and repeated transmission of computer files over the Internet," or at least permitting a user to "exchange information with the host computer." [FN21] Applying this analysis to our hypothetical, the out of state website that offers Le Grand Secret is"interactive": it does not simply inform users that they can buy the book elsewhere (or through other media); it enables them to acquire it directly from the site.

If interactivity is the key to minimum contacts, must in-state residents have in fact interacted with the website, or does the potential for in-state viewing and storage suffice? Courts that have found the minimum contacts standard satisfied by the in-state accessibility of an out-of-state webpage appear to emphasize potential access by in-state computer users, rather than actual in- state access measured by the number of "hits" to the website. Where in-state users have viewed or downloaded Le Grand Secret from the foreign site, it should be clear that the out of state website operator has initiated infringing transactions within the forum. Where the site is accessible in-state but no evidence is submitted as to actual hits, the "potential access" view of minimum contacts would hold that, by inviting residents to view or acquire infringing copies directly from the website, the out-of-state operator avails itself of the benefits of conducting activities within the state. On the other hand, were the evaluation of minimum contacts limited to actual hits, it is conceivable that no single state would *161 have sufficient contacts with the offshore website operator. But this need not mean that no U.S. court will be competent to hear a copyright infringement claim against the foreign defendant. Because the claim arises under federal copyright law, Federal Rule of Civil Procedure 4(k)(2) affords a special basis of personal jurisdiction in exactly this kind of situation. The Rule provides:

If the exercise of jurisdiction is consistent with the Constitution and laws of the United States, serving a summons or filing a waiver of service is also effective, with respect to claims arising under federal law, to establish personal jurisdiction over the person of any defendant who is not subject to the jurisdiction of the courts of general jurisdiction of any state. [FN22]

Thus, so long as there are a sufficient number of nationwide hits to satisfy minimum contacts standards, a federal district court will have personal jurisdiction over the foreign website operator. In applying Rule 4(k)(2) to foreign (non-U.S.) corporations, federal courts have held that "personal jurisdiction may be asserted by courts where a foreign corporation, through an act performed elsewhere, causes an effect in the United States." [FN23] Similarly,

where American residents have been intentionally solicited or targeted by the allegedly tortious conduct and there are sufficient contacts overall with the United States, a court may find that the exercise of personal jurisdiction would not offend the minimum contacts requirement of due process even where the conduct that proximately causes the injury occurs outside this country's borders. [FN24]

A U.S. federal court could determine that the invitation from the operator of U.K. website to U.S. users to download Le Grand Secret is an act causing an effect (creation of infringing copies) in the United States.

Rule 4(k)(2) only applies, however, in the event that all state courts would lack judicial competence. In many, if not most, instances it is likely that a state's doctrine on personal jurisdiction would reach the foreign website operator, particularly if the state's *162 long-arm statute is coextensive with constitutional standards. But in some states constitutional norms may not supply the only limits on the court's competence; the long-arm statute in force in the state in which the federal court sits may decline to exercise the state's power over foreign defendants to the full extent allowed by the federal Constitution. [FN25] Take, for example, the New York long- arm statute. Section 302 of New York Civil Practice Law and Rules offers two relevant bases for asserting personal jurisdiction over the U.K. defendant. One is based on "commit[ting] a tortious act within the state," when the claim arises from that act.[FN26] Another basis is more circumscribed. It recognizes jurisdiction based on tortious acts committed outside the state that cause injury within the state, but also requires that defendant reasonably should have expected its acts to have in-state consequences, and that the defendant "derive[d] substantial revenue from interstate or international commerce." [FN27]

When in-state users access and download allegedly infringing copies from the foreign website, has a tort been committed in the state, thus triggering the first basis for personal jurisdiction? Or does the tort (unauthorized copying or distribution) originate out-of-state, with only an impact (the copies) occurring in-state, thus triggering the potentially more restrictive second basis for judicial competence?

The prevailing view (at least in the United States and the European Union) on communication of works over digital networks holds that copies are made when the work is received, even temporarily, in the memory of a computer. [FN28] As a result, when the in-*163 state receiver accesses or downloads Le Grand Secret at her home computer, she has created an unauthorized copy; a tortious act has thus been committed in the state. But by whom? The offshore website operator has not engaged in-state copying, it has simply made it possible for in-state actors to copy. Under this reasoning, the operator could be seen as a contributory infringer. [FN29]

But one might also characterize the offshore defendant's activities as directly effecting a distribution in the state. In a recent Southern District of New York decision, Judge Scheindlin held that an Italian defendant who operated an Italian website from which U.S. users could access and download images from Playmen magazine--in violation of the trademark rights of Playboy magazine--was not only distributing the images, but was engaging in distribution within the United States. This distribution violated a 1980 order enjoining the defendant from distributing Playmen (then extant only in print format) in the U.S. The foreign website operator had contended that it was "merely posting pictorial images on a computer server in Italy [where distribution of Playmen was lawful], [FN30] rather than distributing those images to anyone within the United States." [FN31] In effect, argued the defendant, U.S. users are taking a virtual voyage to Italy, acquiring Playmen there, and returning to the United States with their copies. The court rejected this argument, stressing "[t]hat the local user "pulls' these images from [defendant's] computer in Italy, as opposed to [defendant] *164 " sending' them to this country, is irrelevant. By inviting United States users to download these images, [defendant] is causing and contributing to their distribution in the United States." [FN32]

By contrast, in an earlier ruling on the motion for a finding of contempt, the court had found that a distribution in the United States had occurred when U.S. users, upon viewing the Playmen teaser screens ("Playmen Lite"), requested a password to view more ("Playmen Pro"). In this opinion, Judge Scheindlin was less clear as to whether simply viewing the "Playmen Lite" images in the United States (without the additional e-mail or fax transaction to obtain the password to "Playmen Pro") constituted a distribution in the United States. [FN33] There was a distribution, but its localization at first seemed uncertain.

In the Le Grand Secret hypothetical, the difference between distributing in the United States and distributing in some unspecified location correlates to the two long-arm bases cited earlier: tortious act committed in the state and tortious act committed out of state, with impact in state (and additional conditions). If the U.K. website operator were making Le Grand Secret available to U.S. users without requiring additional transactions (such as the purchase of a password), under the reasoning of Judge Scheindlin's second opinion in Playboy Enters. there would still be a U.S. distribution because U.S. users would be receiving copies on their screens that they could also printout or download to permanent memory. Under her first opinion in Playboy Enters., by contrast, the place of distribution being uncertain, perhaps the only basis of personal jurisdiction (in a federal court sitting in a state with a long-arm statute like New York's) would be the latter one. In that case, the copyright owner would need to show that the U.K. website operator should have foreseen U.S. downloads, and that the U.K. defendant derived substantial revenue from interstate or international commerce.

With respect to the defendant's source of revenue, one might expect that the copyright owner would not attempt to secure jurisdiction in the U.S. courts over the U.K. website operator if the operator lacked assets in the United States against which a judgment could be enforced. But that may be too swift an assumption. Suppose that the plaintiff was seeking an injunction to block access by U.S. users to the U.K. website. [FN34] (Plaintiff could, of course, go *165 against the U.K. actor in the United Kingdom, but it would prefer to get as much coverage as possible in a single action. [FN35]) In that case, the "substantial revenue" limitation could bar asserting the claim against the offshore actor.

As for foreseeability, it should be clear that once a document is posted on a website, it is foreseeable that it can be accessed anywhere in the world (assuming that the operator has not specifically limited access).

2. Scope of the claim

Assuming that the contacts between the offshore website operator and the U.S. forum are not too tenuous to justify assertion of personal jurisdiction over our hypothetical U.K. operator, the next question is: what is the territorial scope of the claim? If the claim is based on the intra-U.S. impact of an infringement originating outside the United States, then the non-resident alleged infringer would normally be obliged to defend against only those acts that can be localized in the United States. [FN36] The plaintiff would not be able to bootstrap extraterritorial acts, such as the distribution of copies in the United Kingdom or elsewhere in the world, to its U.S. claim. Otherwise, as a practical matter, there would be no difference between the "specific" jurisdiction exercised against a non-resident defendant under a long-arm statute and the "general" jurisdiction to which a resident defendant would be subject.

Now, that makes some sense if one is thinking only in terms of the normally appropriate power of the court to hale a foreign defendant before it. If one is thinking of the plaintiff who is facing a worldwide infringement, this reasoning means that the plaintiff may have to litigate its infringement claims around the world, in each country of receipt/access. Of course, plaintiff could go to the source country of the infringement, or the domicile of the infringer, *166 but this alternative presents at least two problems. First, as illustrated by the entrepreneurial copier of Le Grand Secret who uploaded the book to sites in the United States, the United Kingdom, and Canada, there may be more than one source country. Second, even assuming a single source, a rule that limits trial of the entire action to the source country or to defendant's domicile may well spawn opportunistic relocation of servers and corporate domiciles to the copyright equivalent of the Cayman Islands.

Is there an alternative to litigating either everywhere, or, as a practical matter, nowhere? Libel and defamation law may supply a helpful analogy. The "single publication rule" responds to a similar problem. When a defamatory statement has been published, broadcast, or transmitted to many jurisdictions, one could imagine that receipt of the libel in each jurisdiction constitutes a distinct tort, [FN37] thus obliging the plaintiff to sue in many fora, and putting defendant at risk of inconsistent outcomes. Instead, the "single publication rule" (judge-made in some states, legislated in others) deems an "aggregate communication," such as an edition of a newspaper or a radio broadcast, a "single publication"; while plaintiff may still select among potentially competent fora, she may only choose one. [FN38] Moreover, "recovery in any action shall include all damages for any such tort suffered by the plaintiff in all jurisdictions." [FN39] The purpose of the rule is "avoiding multiplicity of suits, as well as harassment of defendants and possible hardship upon the plaintiff himself." [FN40] In effect, the single publication rule makes compulsory the joinder of claims that the plaintiff could have brought against the defendant in other fora.

Does the territorial scope of the damages claim asserted under the single publication rule transcend U.S. borders? While I am not aware of any U.S. defamation decisions awarding damages for extraterritorial publications, [FN41] the Restatement (Second) of Torts is clear that a plaintiff may so recover:

In [plaintiff's] single action he may recover damages for the publication to all persons whom the communication has reached or may be expected to reach . . . . This is true even though the publication has crossed state lines and has been read, heard or seen in every state and in foreign countries; and *167 all damages sustained in all jurisdictions may be recovered in the one action. [FN42]

Were courts to adapt the single publication rule to copyright infringement in cyberspace, a U.S. court with personal jurisdiction over our hypothetical U.K. website operator would be able to award damages not only for U.S. downloads, but for all downloads, wherever localized (assuming it were possible to calculate or estimate their extent). [FN43] The rule thus could usefully simplify the plaintiff's claim, as well as the defendant's exposure to subsequent litigation. The rule's actual effectiveness would depend on whether the U.K. defendant has sufficient U.S. assets to satisfy the judgment, or if not, whether a U.K. court would recognize such a judgment. [FN44]

Now, if a single publication rule for international copyright infringement claims is such a good idea, why haven't U.S. courts already adopted it? After all, multinational infringements are not new with cyberspace, although cyberspace certainly aggravates the problem. One reason may be that, with respect to multinational infringements that did not involve distribution or public performance of works in the United States, there may have been no basis for personal jurisdiction over a foreign infringer. In cyberspace, by contrast, even far away infringements can come to the United States, and thus potentially subject the offshore defendant to the jurisdiction of our courts. A more significant reason may be that, in the United States, copyright is exclusive federal subject matter. Courts and litigants did not need a single publication rule for copyright, because one copyright action already covered the whole national *168 territory. [FN45] On the other hand, even U.S.- originated infringements can impact abroad, notably in Canada. As to these claims, however, litigants in the past appear to have concentrated on whether U.S. copyright law could apply to extraterritorial acts or impacts, not on whether plaintiff could be compelled to add the foreign claim to the U.S. action. As a U.S. court has emphasized, "[t]he single publication rule is not a choice-of-law rule. Instead, the single publication rule determines how many causes of action a plaintiff might have . . . ." [FN46] And with this distinction between the single publication rule and choice of law, it is now appropriate to turn to the latter issue.

III. Choice of Law

First, if my proposal to adopt a single publication rule for multinational infringements in cyberspace were adopted, would the choice of law analysis be simplified as well? Not necessarily. While in single publication rule cases the forum applies its own law to determine the applicable statute of limitations, [FN47] it is unclear what law applies to the substance of the defamation claim. Indeed, it is not even clear if the forum should apply one law, [FN48] or as many laws as there are jurisdictions to which the libel was communicated. [FN49] Ultimately, the appropriateness of the forum applying its own law (and only its own law) may depend on the facts of the alleged infringement.

A. The U.S. Forum is Defendant's Domicile--or is the Point of Origin of the Infringement

Let us return to the comparatively straightforward situation in which the allegedly infringing communication originates from a U.S. website. Clearly, U.S. copyright law would apply to all U.S. access of the work, and the court should be able to enjoin the operation *169 of the U.S. site altogether. But what law applies to copies made outside the United States, when offshore users logged onto the U.S. site? Still U.S. law, or the laws of the countries of end use? Our ever-present desire to keep things simple would counsel application of U.S. law, even to infringements that culminate offshore. The case law, however, is conflicted. There appears to be a split between the Ninth Circuit and other courts, most notably the Second Circuit.

In a series of decisions dating back to 1939, the Second Circuit has upheld the application of U.S. law to distribution of copies abroad, when the foreign copies were further reproductions of an initial infringing reproduction committed in the United States. [FN50] Other courts have also applied this master copy approach to the extraterritorial extension of U.S. copyright law. [FN51] The Second Circuit has, however, distinguished the master copy cases when plaintiff sought recovery for offshore live performances of copyrighted works. When an unauthorized performance takes place abroad, the material connection to the United States provided by an initial unauthorized reproduction is considered lacking. [FN52]

The Ninth Circuit appears more reluctant to apply U.S. copyright law to extraterritorial acts. In a recent decision concerning videocassette rights to the Beatles' film Yellow Submarine, the court declined to apply U.S. law to a claim that the U.S. defendant had "authorized" offshore actors to make and distribute videocassettes of the film, in violation of plaintiff's alleged rights. [FN53] None of the allegedly infringing videocassettes were manufactured or sold in the United States.

Although the U.S. Copyright Act confers on authors the exclusive*170 rights "to do and to authorize" certain acts, including reproduction, distribution, and public performance, [FN54] the Ninth Circuit held that "authorization" alone is insufficient to justify the application of U.S. law. [FN55] Invoking the national treatment principle of the Berne Convention, [FN56] the Ninth Circuit stressed that copyright is territorial, and that courts should therefore apply the law of the countries where the infringing distribution takes place. [FN57]

Subafilms was not necessarily inconsistent with the Second Circuit decisions, since no infringing master copy was alleged to have been made in California, and the Second Circuit cases did not involve "mere authorization." A later Ninth Circuit decision, however, seems more in tension. In a controversy concerning the diversion of the Showtime cable signal to Canadian viewers, the Ninth Circuit held that it made no difference whether the U.S. defendant had authorized Canadians to appropriate the signal, or had instead itself broadcast the signal from the United States to Canada. "In either case, the potential infringement was only completed in Canada once the signal was received and viewed." [FN58]

The Ninth Circuit's approach has provoked criticism from commentators [FN59] and, to date, one district court, in Tennessee. [FN60] For that court, the Ninth Circuit's analysis was artificial and out of touch. "[P]iracy has changed since the Barbary days," the Curb court emphasized. [FN61]

Today, the raider need not grab the bounty with his own hands; he need only transmit his go-ahead by wire or telefax to start the presses in a distant land. Subafilms ignores this economic reality . . . . Under [the Ninth Circuit's] view, a phone call to Nebraska [from the United States] results in liability; the same phone call to France results in riches. In a global marketplace, it is literally a distinction without a difference. [FN62]

*171 What is the relationship of this debate to our hypothetical U.S. website? When foreign users log onto the U.S. site and download copies to their computers outside the United States, these acts could be characterized as further reproductions made from the illicit master copy on the U.S. website, and thus within the scope of U.S. law, as the Second Circuit has articulated the law's reach. Alternatively, applying the Ninth Circuit's approach, one might view the website as an invitation ("authorization") to all Internet users to access the document and produce copies. U.S. downloads would be governed by U.S. law (that would be true were the server located in the United Kingdom as well), but foreign downloads, since they "culminate" off shore, would be subject to the law of the place of receipt.

One begins to appreciate the Tennessee court's frustration with insistence on the dual conditions of territoriality and materiality. Perhaps courts should be less materialistic about identifying infringement, and recognize that intellectual acts of planning unauthorized acts of copying, public performance, or distribution can be localized here in the United States. [FN63] In the networked world of dematerialized copies, the U.S. originator of an infringing communication can attempt to elude the application of her own law by ensuring that copies are initially "sent" from a server outside the United States to destinations outside the United States. This illustrates the problem with confining legislative competence over the alleged infringement to the place where copies are made. [FN64] It may make more sense to identify the place where the plan to engage in unauthorized dissemination was devised, and then to consider the application of that place's law. I would argue that if it is possible to localize in the United States the point from which the unauthorized communication becomes available to the public (wherever that public be located), then U.S. law should apply to all unauthorized copies, wherever communicated. Similarly, where the United States is the nerve center for foreign distributions, the domestic *172 acts of planning and intellectually implementing the offshore acts should suffice to justify the application of U.S. law to the foreign communications.

Is this recommendation consistent with the conflicts rule of the Berne Convention, which directs application of the law of the country "where protection is claimed" to govern infringement claims? [FN65] One can read that text to require distributive application of the laws of all of the countries in which infringing copies appear. [FN66] Or one could contend that the "country where protection is claimed" is the forum country when that is the country from which the infringement originated, and which is best placed to accord an effective international remedy. [FN67]

Similarly, if the basis of judicial competence is the U.S. domicile of the defendant, rather than the U.S. point of origin of the communication, I would argue that U.S. law should still apply to the entirety of the infringing acts. Indeed, to some extent, the "point of origin" approach and the defendant's domicile may converge: the defendant's domicile is likely to be the same as the place from which defendant planned a series of unauthorized acts, many of them culminating abroad. [FN68] Moreover, the law of headquarters (especially when that is the place from which defendant devised and executed its program of international infringement) has a close relationship to all the alleged illicit acts; that law will produce the same result, whatever the destination of the pirated copies. In addition, under U.S. conflict of laws principles, the forum has a strong interest in regulating the activities of its domiciliaries. [FN69]

This analysis has focused on application by a U.S. court of its own law when that law is the law of the point of origin of the allegedly infringing digital communication, or of defendant's domicile. The "domicile" and "origin of the communication" points of attachment are not fully generalizable: to make these the choice of law rules in all cases would again spur manipulation of these criteria in order to localize them in the "Cayman Islands of copyright." *173 Thus, any generalization of these criteria would require that a court ascertain whether the law designated by these points of attachment meets minimum standards of copyright protection, such as those set forth in the Berne Convention and the Agreement on Trade Related aspects of Intellectual Property ("TRIPS"). [FN70]

B. The Infringement Originated Outside the U.S. Forum, and Defendant Is a Non- Domiciliary

Finally, let us return to the U.K. website operator, who is before the U.S. courts on a long-arm basis. The single publication rule (if adapted to international copyright cases) would subject the foreign defendant to suit in the United States for non-U.S. distributions as well, but we have yet to resolve which law(s) apply to those distributions. While the simplest solution would be to apply U.S. copyright law to all downloads, the relationship of the U.S. to foreign downloads from a foreign website seems too attenuated (assuming the operator is also non-U.S.) to justify such extensive application of U.S. law. Rather, the court should either apply the law of the place of the server or of the defendant's domicile. However, if these places are copyright havens, then the court should revert to the traditional territorial approach and apply the law of each country of receipt. Copyright is a "transitory cause of action": so long as the court has personal jurisdiction over the foreign defendant, it can apply a foreign copyright law. [FN71]

Moreover, the court should apply foreign law, especially when the claim presents many points of attachment with the forum, and no other forum is likely to be able to adjudicate the entirety of the action. U.S. courts too often dismiss on grounds of forum non conveniens when called upon to apply foreign law. [FN72] For example, in a *174 recent decision involving worldwide videocassette rights to Stravinsky's Rite of Spring, recorded on the soundtrack to Disney's Fantasia, the Southern District of New York dismissed the action, remitting the plaintiff music publisher to trying its copyright infringement claims in each of the eighteen foreign countries where videocassettes of Fantasia were distributed. [FN73] Because the U.S. copyright in the work had never been secured, there was no U.S. copyright claim. There were nonetheless substantial U.S. contacts to the litigation: defendant was a U.S. corporation; the contract in which Stravinsky granted rights to record Rite of Spring onto the film soundtrack was signed in New York and governed by New York law. The court justified its forum non conveniens dismissal on the grounds that the substantive copyright issues would best be tried in the countries whose domestic copyright laws would be called into play.

This is a weak basis for dismissal when the United States probably was the only forum in which all eighteen copyright claims could have been adjudicated. Nor would the copyright issues necessarily have been better resolved in eighteen different proceedings. The substantive issue in the case was whether a 1939 contract authorizing recording of the music onto the film's soundtrack for exhibition of the film in theaters should be interpreted to authorize reproduction and public distribution of videocassettes of the film. The Southern District of New York could have heard proof on the resolution of the old license/new media issue under the laws of the eighteen countries at issue. While other countries may resolve that issue differently, the issue under foreign law is no more elusive than it is under U.S. law.

Assuming that the court should apply foreign copyright law to the non-U.S. based claims, must the plaintiff plead and prove the laws of all 100 or more other countries where the work could have been received, and for which the plaintiff seeks damages? Perhaps resorting to a presumption that foreign copyright law resembles U.S. copyright law would help. U.S. courts have occasionally applied such a presumption, leaving it to the defendant to demonstrate that, in certain jurisdictions, the law is different. [FN74] The *175 presumption may be particularly appropriate in the copyright area, where over 100 countries are members of the Berne Convention, a multilateral treaty that imposes substantive minimum standards of copyright protection. [FN75]

IV. Conclusion

To conclude, let us return to the site--physical as well as digital--at which our story began. Back in eastern France, our cybercafe entrepreneur was enjoying considerable notoriety as a result of his Internet exploits. All the major papers carried the story of his scanning and uploading Le Grand Secret. But his fifteen minutes of fame ultimately did him in. The authorities did pursue him, although not for copyright infringement, nor for post-mortem privacy violations. Rather, the national press coverage awakened local officials in another part of France to a trail that had run cold: our entrepreneur went to jail for "family abandonment" and failure to pay child support. [FN76]

Many thanks for substantive suggestions to Professor Jessica Litman, Professor Henry Monaghan, and to the participants in the Columbia Law School faculty symposium, and for research assistance to Deirdre von Dornum, Columbia Law School 1997. END OF DOCUMENT