Jurisdiction

• Author: Robert A. Gorman
• Profession: University of Virginia School of Law
• Pages: 101

Jurisdiction

Jurisdiction to hear actions "arising under any Act of Congress relating to... copyrights" is given exclusively to federal courts pursuant to 28 U.S.C. ~ 1338(a). The typical infringement action therefore cannot be brought in a state court. Although so-called common-law copyright claims (relating to unpublished works) could have been brought in state courts under the 1909 Copyright Act, that is no longer true because section 301 of the 1976 Act has abolished state copyright law.

It is sometimes difficult to determine whether a claim "arises under"

the federal Copyright Act, particularly when the principal issue to be determined relates to contract interpretation or disputed ownership.

Federal jurisdiction will be exclusive if the action is for copyright infringement or if its determination turns on an interpretation or application of the federal Copyright Act. In a frequently cited passage from the opinion of Judge Friendly in T.B. Harms v. Eliscu, the Court of Appeals for the Second Circuit stated:

Mindful of the hazards of formulation in this treacherous area, we think that an action "arises under" the Copyright Act if and only if the complaint is for a remedy expressly granted by the Act, e.g., a suit for infringement or for the statutory royalties for record production, or asserts a claim requiring construction of the Act... or, at the very least and perhaps more doubtfully, presents a case where a distinctive policy of the Act requires that federal principles control the disposition of the claim. The general interest that copyrights, like all other forms of property, should be enjoyed by their true owner is not enough to meet this last test.[167].

Even if a dispute over title must be resolved antecedent to determining infringement and remedies, and the title dispute turns on contract construction, a federal court will have jurisdiction.[168] Moreover, as suggested in the Harms quotation, if the only dispute before the court relates to disputed.title, even that will provide a basis for exclusive federal jurisdiction if the dispute turns on application of statutorily defined terms such as "work for hire" or "joint work."[169].

As with any federal court action, a substantial copyright claim will carry with it pendent jurisdiction to hear state-law claims that are significantly related. The usual rules that obtain in federal actions concerning the determination of personal jurisdiction over the defendant and proper venue also apply in copyright cases.

Copyright actions have historically been treated throughout the world as "local" actions, in the sense that jurisdiction to adjudicate a claim of infringement will lie only in the courts of the nation where the claimed infringement occurred, and those courts will apply only their own law (at least on the issue of whether the defendant's conduct constituted an infringement). Most courts will not hear a claim that the defendant infringed a copyright by conduct in another nation, or that another nation's copyright law governs. Article 5(2) of the Berne Convention, the principal international copyright convention since 1886 that was joined by the United States in March 1989, provides: "[A]part from the provisions of this Convention, the extent r protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed." The Court of Appeals for the Ninth Circuit has held, however, that it was proper for a U.S. court to assert jurisdiction and to apply our copyright law with respect to an infringement stemming from the unauthorized distribution of videocassettes of the plaintiff's film in the United Kingdom and Sweden.[170].

The court found that the defendant had committed an infringement in the United States by its authorization here of the distributions overseas; section 106 of the 1976 Copyright Act gives to the copyright owner the exclusive right not only to reproduce and sell but also to authorize such conduct.

Who may sue

The 1976 Act defines "infringer of the copyright" and accords rights to institute infringement actions. Section 501(a) provides that "Anyone who violates any of the exclusive rights of the copyright owner as provided by sections 106 through 119, or who imports copies or phonorecords into the United States in violation of section 602, is an infringer of the copyright." Section 501(a)-particularly when read in conjunction with section 201(d)(2)-has made a most important change in our law regarding the proper plaintiff in an infringement action. Under the 1909 Act, the only person who could sue for infringement was...