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Intentional Infringer Subject to Suit in IP Owner's Home Court

By Sarah Robertson, Susan Progoff, Fara Sunderji and Jena Tiernan of Dorsey & Whitney LLP

The Ninth Circuit Court of Appeals recently decided a jurisdictional case that should make it easier for IP owners to bring infringement actions in the owner's home state instead of where a remote defendant may be located. In Washington Shoe Company v. A-Z Sporting Goods, Inc., 105 USPQ2d 1138 (9th Cir. 2012), the court held that a defendant who operated a single store in Arkansas was subject to suit for copyright infringement in Washington State, where the copyright owner was located. The defendant, A-Z Sporting Goods (A-Z), purchased shoes from Washington Shoe, the plaintiff and copyright owner. One of Washington Shoe's sales representatives visited A-Z's store, noticed that A-Z was selling infringing shoes and subsequently Washington Shoe's counsel sent A-Z two cease and desist letters. When A-Z received the letters, it removed the infringing shoes from its store but sold its remaining inventory of those items to a thrift store.

The Ninth Circuit applied the "purposeful direction" or "effects" test, analyzing whether A-Z (1) committed an intentional act, (2) that was expressly aimed at Washington, the forum state, and (3) that caused harm that A-Z knew would likely be suffered in Washington. The court answered all three questions in the affirmative. A-Z intentionally purchased and sold the infringing boots. Although these acts took place in Arkansas, they were expressly aimed at the copyright of Washington Shoe because A-Z knew or should have known after receiving the cease and desist letters that its intentional acts would affect Washington Shoe's copyright. A-Z also either knew or should have known that Washington Shoe was a Washington corporation. The economic harm caused by the copyright infringement occurred both in Arkansas, where the infringing sales took place, and in Washington, where the copyright holder was located. Thus, A-Z could have "'reasonably anticipate[d] being haled into court' in Washington." As a result of this decision, willfully infringing a copyright may provide sufficient minimum contacts requisite for personal jurisdiction in the copyright owner's home forum.

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This page contains a single entry from the blog posted on February 7, 2013 3:57 PM.

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