China Esquire

Having said what I did in my previous post, you may be wondering if there really is anything else to follow up.  My answer: of course there is!  (that’s why this is a 3 part series, and not a one shot deal)

What happens now when there is some sort of contract or written agreement that would vest jurisdiction (and of course, venue) in the United States in such a situation?  I can imagine a number of scenarios for this.  (1) You have a shrinkwrap license that somehow makes its way overseas.  (2) You have an exclusive distribution agreement for your music in particular countries.  (3) You have an end user license agreement (”EULA”) each time you install software.  (4) Any other scenario which involves a written license or agreement…  use your imagination.

And then you have as part of that license or agreement that subject matter jurisdiction is vested in some court located in the United States.  Not just venue, but jurisdiction.  And you include in your agreement that the parties agree that U.S. copyright law should apply to any and all disputes.  Okay…  so that should make things fullproof?  That you can write your way around Subafilms and get a U.S. court to apply the federal Copyright Act?  You might think so, and it seems intuitive to some of the corporate types.   And if you’re the plaintiff, you might even argue so to the court.

My response?  You’re still out of luck.  There is a general axiom in civil procedure that a contract can’t hand jurisdiction to the courts.  Where a court lacks subject matter jurisdiction, the parties cannot simply vest it by agreement.  Kolbe v. Trudei, 945 F. Supp. 1268, 1270 (D. Ariz. 1996).  In Kolbe, the court specifically rejected an argument that a licensing agreement that contained a forum selection clause granted jurisdiction to the District of Arizona over infringing French translations.  The court held that “parties cannot agree to invest this Court with subject matter jurisdiction.  Either subject matter jurisdiction exists or it does not exist, a matter independent of the parties’ agreement.”  Id.

So, the hard work that your corporate lawyer did to ensure that jurisdiction and venue were established in the United States may still be worth something if the copyright infringement took place in America.  But if you’re overseas, then that hard work is worth nothing.  Period.

If you represent plaintiffs, don’t think that your EULA or other agreement will save you.  It won’t.  You need to get another way to connecting things to the U.S., or else, it just won’t fly in federal court.  (at least, it won’t in the 9th Circuit)

If you represent defendants, then just argue Kolbe and the general axiom.  It’s quite obvious.

Third installment coming soon!

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