Opinion
Civil No. 01-624-AS
October 23, 2001
FINDINGS AND RECOMMENDATION
Defendant Iyanla Vanzant ("Defendant") moves to dismiss the copyright infringement claims asserted against her by plaintiff Patrick Overton ("Plaintiff"). Defendant asserts that this court lacks personal jurisdiction over her and that venue is improper in this district. In the alternative, Defendant moves to transfer venue to Maryland under 28 U.S.C. § 1404(a).
BACKGROUND
Plaintiff is the author and owner of the copyright to a poem entitled "Faith" (the "Poem"). Defendant included the Poem in the forward to her book "Tapping the Power Within" which was first published in 1992 (the "Book"). Defendant was unaware that Plaintiff was the author of the Poem and attributed the Poem to "Dr. Jordan Margaret Paul" in the Book.
On October 26, 1998, Defendant appeared as a guest on the Oprah Winfrey television show and characterized the Poem as the "turning point" of her life. Defendant then recited a paraphrased version of the Poem by memory without recognizing anyone as the author. Oprah Winfrey displayed an audiotape of Defendant reciting the Poem on her web site for a few months after the show was aired.
From 1986 to 1999, Plaintiff worked as a college professor at Columbia College in Columbia, Missouri, and resided in the State of Missouri. Plaintiff currently resides in Astoria, Oregon. Defendant is a resident of Maryland. Defendant has never maintained a residence or business in the State of Oregon; owned, rented or leased any property in the State of Oregon; paid taxes in the State of Oregon; done business in the State of Oregon; or designated a registered agent for service in the State of Oregon. She traveled to Oregon on one occasion in February 1999, to attend a one-day seminar.
Defendant wrote the Book while living in Maryland. She sold the rights to the book to Harlem River Press, which then published and distributed the Book nationally. Defendant appeared on the Oprah Winfrey television show in Chicago, Illinois. The Oprah Winfrey television show is broadcast nationally.
LEGAL STANDARD
Determining whether personal jurisdiction exists over an out-of-state defendant involves two inquiries: whether the forum state's long-arm statute permits the assertion of jurisdiction and whether assertion of personal jurisdiction violates federal due process. Fireman's Fund Ins. Co. v. National Bank of Cooperatives, 103 F.3d 888, 893 (9th Cir. 1996); Chan v. Society Expeditions, Inc., 39 F.3d 1398, 1404-05 (9th Cir. 1994), cert. denied, 514 U.S. 1004 (1995). The relevant state statute applies even when the cause of action is purely federal. Fed.R.Civ.P. 4(k). Oregon's long-arm legislation is found in Rule 4 of the Oregon Rules of Civil Procedure. Plaintiff maintains that Rules 4C and 4D confer personal jurisdiction over defendants. However, Oregon's catch-all jurisdictional rule confers personal jurisdiction coextensive with due process. Or. R. Civ. P. 4L. Thus, the analysis collapses into a single framework and the court proceeds under federal due process standards.
Rules 4C and 4D authorize personal jurisdiction as follows:
4C Local act or omission.
In any action claiming injury to person or property within or without this state arising out of an act or omission within this state by the defendant.
4D Local injury; foreign act.
In any action claiming injury to person or property within this state arising out of an act or omission outside this state by the defendant, provided in addition that at the time of the injury, either:
D(1) Solicitation or service activities were carried on within this state by or on behalf of the defendant; or
D(2) Products, materials, or things distributed, processed, serviced, or manufactured by the defendant were used or consumed within this state in the ordinary course of trade.
Due process requires that a defendant, if not present in the state, "have certain minimum contacts with it such that the maintenance of the suit does not offend traditional notions of fair play and substantial justice." International Shoe Co. v. Washington, 326 U.S. 310, 315 (1945) (internal quotation marks omitted). Minimum contacts can be demonstrated through facts supporting either general or specific jurisdiction over the defendant. See Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414 (1984). Plaintiff bears the burden of establishing personal jurisdiction through a prima facie showing of jurisdictional facts. American Telephone Telegraph Co. v. Compagnie Bruxelles Lambert, 94 F.3d 586, 588 (9th Cir. 1996); Farmers Ins. Exchange v. Portage La Prairie Mut. Ins. Co., 907 F.2d 911, 912 (9th Cir. 1990).
DISCUSSION
Plaintiff contends that this court has both general and special jurisdiction over Defendant. In support of this contention, Plaintiff relies on Defendant's national presence as an author of eleven books sold nationwide, including three best sellers; her nationwide self-help workshops; her interactive internet website, which promotes her books, audio-tapes, compact discs and workshops; her national appearances on Oprah Winfrey and her own national talk show entitled "Iyanla."
General Jurisdiction
General jurisdiction refers to the authority of a court to hear any cause of action involving a defendant, regardless of whether the cause of action arose from the defendant's activities within the forum state. Helicopteros, 466 U.S. at 415. In order for a court to assert general jurisdiction, the defendant must have "continuous and systematic" contacts with the forum state. Id. at 416.
It is undisputed that Defendant is a resident of Maryland and that she has no physical presence within the State of Oregon. Defendant is not registered to conduct business in Oregon and has no registered agents, employees or sales representatives located in Oregon. She has traveled to Oregon only once for a period of less than 24 hours. Defendant is the author of numerous books which have been sold within the State of Oregon and has appeared on television shows that are broadcast into the State of Oregon.
The Ninth Circuit has held that when considering contacts with a foreign state for purposes of establishing personal jurisdiction over a nonresident defendant, only contacts occurring prior to the event causing the litigation may be considered. Steel v. United States, 813 F.2d 1545, 1549 (9th Cr. 1987). Defendant's national talk show did not air until the Fall of 2001. Plaintiff has presented no evidence that Defendant's website, or the related websites over which she advertises, promotes and sells her products, existed in 1998 or that Defendant was offering her products over such websites in 1998. Plaintiff has presented no evidence that Plaintiff conducted workshops in the State of Oregon prior to or in 1998. Accordingly, Defendant's contacts with the State of Oregon generated by her talk show, her website and related websites and her workshops are not relevant to whether Defendant was engaged in "continuous and systematic" contacts with Oregon in 1998.
The contacts relevant to the issue before the court are the sale of Defendant's books within the State of Oregon and her appearance on the Oprah Winfrey show in late 1998. Based on existing Ninth Circuit law, these contacts are insufficient to subject Defendant to general jurisdiction in the State of Oregon.
In Scott v. Breeland, 792 F.2d 925 (9th Cir. 1986), the Ninth Circuit addressed the issue of whether the music group the "Oak Ridge Boys" had sufficient contacts with the State of California to warrant a finding of general jurisdiction. The court applied the "substantial" or "continuous and systematic" test enunciated in Helicopteros and found that the music groups occasional performance in the State of California and the sale of the music groups records and tapes within the Los Angeles area did not support the exercise of general jurisdiction over the music group by the California court. Scott, supra, 792 F.2d at 927-8. The court reasoned that while the distribution of records to California could be characterized as "systematic," it relied on Keeton v. Hustler Magazine, Inc., 465 U.S. 770 (1984) to find that the distribution was "it is insufficient to confer general jurisdiction." Id. at 928.
The court finds that Defendant pre-1999 contacts with the State of Oregon are insufficient to establish general jurisdiction over Defendant. The court must now consider whether it has specific jurisdiction over Defendant with regard to Plaintiff's infringement claim.
Specific Jurisdiction
Specific jurisdiction refers to a situation in which the cause of action arises directly from a defendant's contacts with the forum state. See, Sher v. Johnson, 911 F.2d 1357, 1361 (1990). The Ninth Circuit employs a three-part test to determine whether the exercise of specific jurisdiction comports with due process. Ballard v. Savage, 65 F.3d 1495 (9th Cir. 1995); Roth v. Garcia Marquez, 942 F.2d 617, 620 (9th Cir. 1991). First, the defendant must perform some act or consummate some transaction within the forum by which it "purposefully avails" itself of the privilege of conducting activities in the forum, thereby invoking the benefits and protections of the forum and having "fair warning" that a particular activity may subject it to jurisdiction. See, Burger King v. Rudzewicz, 471 U.S. 462, 472, 475 (1985). Second, the claim must be one which arises out of or results from the defendant's forum-related activities. Third, the court's exercise of jurisdiction must be reasonable. Ballard, 65 F.3d at 1498; Roth, 942 F.2d at 620-21.
Purposeful availment is shown "if the defendant has taken deliberate action within the forum state or if he has created continuing obligations to forum residents." Ballard, 65 F.3d at 1498. Although contacts that are "isolated" or "sporadic" may support specific jurisdiction if they create a "substantial connection" with the forum, the contacts must be more than random, fortuitous, or attenuated. Burger King, 471 U.S. at 472-73, 475. Furthermore, it is not required that a defendant be physically present within the forum, provided its efforts are purposefully directed toward forum residents. Id. at 476. For example, jurisdiction may be properly asserted over a defendant who directs its tortious conduct toward the forum state, knowing the effects of the conduct will cause harm. Calder v. Jones, 465 U.S. 783, 789-90 (1984). However, contacts resulting from the "unilateral activity of another party or third person" are not attributable to a defendant. Burger King, 471 U.S. at 475 n. 17. With these principles in mind, the court turns to the conduct of Defendant that Plaintiff asserts establishes minimum contacts with this forum.
Appearance on the Oprah Winfrey Show
Defendant appeared on the Oprah Winfrey talk show in October 1998 and recited the Poem without crediting Plaintiff as the author. The show was taped in Chicago, Illinois, and was broadcast nationally.
First, Defendant argues that Plaintiff has failed to establish that the October 26th show was ever broadcast in the State of Oregon. Plaintiff presented evidence in the form of an affidavit establishing that the October 26th show was broadcast in the State of Oregon. Even without this evidence, the court would take judicial notice that the Oprah Winfrey talk show is broadcast in the State of Oregon on a regular basis.
Next, Defendant argues that she had no control over the broadcast content or the airing of the Oprah Winfrey talk show. She contends that the airing of the show in Oregon was a unilateral act of a third party over which she had no control. Plaintiff counters with the argument that Defendant should have reasonably anticipated that the show would air in Oregon and that Plaintiff, as the true owner of the Poem, would be damaged by the broadcast.
The mere fact that a individual can "foresee" that their actions or products will be distributed or broadcast to a specific state is not sufficient for an assertion of jurisdiction. World Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 295 (1980). The unilateral activity of a third party "is not an appropriate consideration when determining whether a defendant has sufficient contacts with a forum state to justify an assertion of jurisdiction." Helicopteros, 466 U.S. 417. The individual must purposefully direct conduct toward the state with the knowledge that they are likely to cause harm in that state.
Here, Defendant was merely a guest on a nationally televised talk show. The transcript of the broadcast establishes that Defendant was not actively promoting or advertising the Book during the telecast. Rather, she appears to be serving as a "self-help" specialist offering advise to women in bad relationships. She recited the Poem at the request of Oprah Winfrey and did not mention the Book.
While she may have been able to anticipate that the talk show would be aired in Oregon, she did not purposefully avail herself of the opportunity to do business in the State of Oregon by appearing as a guest on the Oprah Winfrey show. If the court were to extend the reach of special jurisdiction in the manner requested by Plaintiff, every participant on a talk show who manufactures or sells a product or engages in business would be subject to personal jurisdiction in every state in the country. There is no indication that the Supreme Court ever intended the arm of specific jurisdiction to extend to that length.
Oprah Winfrey's Website
The same argument can be made with regard to the availability of the audiotape of Defendant reciting the poem on Oprah Winfrey's website. If the underlying broadcast is insufficient to establish personal jurisdiction, the reproduction of that broadcast would be insufficient as well. Additionally, there is no evidence that the Oprah Winfrey website was anything other than a passive, informational site. Courts have generally refused to find that special jurisdiction exists based on passive website advertising. Millennium Enterprises, Inc., v. Millennium Music, L.P., 33 F. Supp. 907, 916 (D.Or. 1999).
National Sales of the Book
Plaintiff argues that the sale of the Book in the State of Oregon is sufficient to establish jurisdiction over Defendant. Defendant contends that she sold the rights to the Book to a publishing company and that she had no control over where the Book would be sold.
While a number of courts have extended the doctrine of specific jurisdiction to its outer limits in copyright actions, the Ninth Circuit limits the doctrine to cases in which the alleged infringer had direct, personal contacts with the forum state. In Rano v. Sipa Press, Inc., 987 F.2d 580 (9th Cir. 1993), the court addressed the issue of whether the California courts had specific jurisdiction over an individual who provided copyrighted material to a publication company with the knowledge that the material would be distributed in California. The individual defendant was the owner of a photograph distribution syndicate that owned a non-exclusive license to the plaintiff's photographs.
The plaintiff, a citizen of Great Britian who resided and had his principal place of business in the State of California, filed an action against the individual defendant and his syndicate for breach of his copyright. Id. at 583. The individual defendant was a citizen of Turkey and a long-time resident of France. He had visited California three times in seven years, staying a total of six days. None of the visits involved the plaintiff or his photographs. Id. at 587.
The court granted the individual defendant's motion to dismiss for lack of jurisdiction rejecting the plaintiff's argument that the individual defendant's licensing of photographs to magazine publications with the knowledge that they would be distributed in California was purposeful availment of the privilege of doing business in the State of California. "[Plaintiff's] argument, if accepted, would render [the individual defendant], and other foreign owners of art who sell their products to publications, amenable to personal jurisdiction in every state in which their art eventually is displayed." Id. at 588 The court based its decision, in part, on the lack of evidence that the individual defendant "invoked any of the benefits or protections of California's laws." Id.
It is clear that the Ninth Circuit applied a heightened standard in Rano as a result of the foreign residency of the individual defendant. However, this court finds that the analysis applies equally as well to the facts currently before the court.
Here, Defendant sold all of her rights in the Book to a publishing company. It is reasonable to assume that she knew that the Book would be offered for sale in the State of Oregon and that she indirectly benefitted from the sales of the Book in the State of Oregon. However, Defendant herself did not engage in any intentional, independent act to avail herself of the opportunity to business in the State of Oregon. She did not direct any of her activities with regard to the Book or the Poem into the State of Oregon. She had no right to demand that the publishing company sell Books in the State of Oregon and had no right to exclude Oregon from the states in which the Book was sold.
Plaintiff alleges that Defendant infringed on his copyright within the State of Oregon "by publishing, offering for sale and selling the Book." Defendant did not publish the Book. She offered for sale and sold her rights to the Book to Harlem River Press. There is no allegation that this sale occurred in the State of Oregon. The acts which Plaintiff complains of occurred after Defendant relinquished all rights to the Book and were the independent actions of Harlem River Press. Based on the evidence before the court, Defendant did not perform or promote the Poem or the Book within the State of Oregon after she sold the rights to the Book to Harlem River Press.
This case is easily distinguished from Thomas Jackson Publishing, Inc. v. Buckner, 625 F. Supp. 1044 (D.Neb. 1985) and Payne v. Kristofferson, 631 F. Supp. 39 (N.D.Ga. 1985) upon which Plaintiff relies. In these cases, the courts held that the distribution of a copyrighted song, combined with recording and numerous performances of the song by the defendants themselves, provided sufficient contacts within the forum state even though the distribution was handled by a third party. The fact that the defendants themselves engaged in continuing acts of infringement by performing and promoting the infringing material within the forum state justifies a finding a personal jurisdiction.
Here, the only performance of the Poem by Defendant established by Plaintiff occurred on the Oprah Winfrey talk show and was the result of a direct request by Oprah Winfrey. This is not the numerous, continuing acts of infringement considered by the courts in Thomas Jackson or Payne.
The court finds that Defendant did not purposefully avail herself of the privilege of conducting business in the State of Oregon. Defendant's motion to dismiss for lack of personal jurisdiction should be granted.
CONCLUSION
Defendant's motion (8) to dismiss for lack of jurisdiction should be GRANTED. Defendant's alternative motions to dismiss for improper venue and to transfer based on inconvenience should be DENIED as moot.