US Court Applies Domestic Copyright Law to Canadian Uploading Content to US Server

On August 22, 2011, the U.S. District Court for the Northern District of California (Court) denied a Canadian defendant’s motion to dismiss a plaintiff’s action for infringement under the US Copyright Act (17 USC § 106) and for misrepresentation under the Digital Millennium Copyright Act (DMCA) (17 USC § 512) (collectively, the US Legislation). The Court’s denial of the motion was partly based on its finding that the act of uploading a video from a personal computer located in Canada to a server located in California was “not wholly extraterritorial” to the United States, and therefore fell within the ambit of the US Legislation. The plaintiff, a co-owner of the copyright in the holiday song “Grandma Got Run Over by a Reindeer” (the Grandma Song), brought an action against the defendant, located in Canada, for uploading a video to YouTube containing a performance of the Grandma Song by the Irish Rovers, a group of Canadian recording artists. YouTube initially took down the video after the plaintiff served it with a take-down notice pursuant to the DMCA. YouTube subsequently reinstated the video following the defendant’s issuance of a counter-notice assuring YouTube that the plaintiff was mistaken. YouTube refused to take down the video until the plaintiff filed a lawsuit against the defendant. The plaintiff brought the action, and the defendant brought a motion to dismiss the action on the basis that the plaintiff failed to state a legally sufficient claim. The Court found that the extraterritorial effect of the US legislation should be determined as an element of the plaintiff’s claim and not as matter of subject matter jurisdiction. The Court held that the defendant’s act of uploading the video from Canada onto YouTube’s California server fell within the ambit of the US legislation, because the act led to the creation of a copy of the video on YouTube’s California servers. The Court further allowed the plaintiff’s claim for misrepresentation to proceed because a prior statement made by the defendant, urging the plaintiff to contact YouTube to remove the video, acknowledged the plaintiff's right to have YouTube remove the video. This contradicted the defendant’s assurance to YouTube in the counter-notice that the plaintiff was mistaken. However, the Court found that a second statement by the defendant, an assertion that it did not copy any original performance of the plaintiff, was not a misrepresentation because the audio and visual portions of the video were actually copied from other sources. Summary by: Darren Hall