Metropolitan News-Enterprise


Thursday, August 6, 2009


Page 3


Court Upholds Jurisdiction Over San Diego Law Firm in Plagiarism Case


By a MetNews Staff Writer


A San Diego law firm that allegedly plagiarized from a Novato, Calif.-based law firm’s copyrighted website was subject to personal jurisdiction in the Northern District of California, the Ninth U.S. Circuit Court of Appeals held yesterday.

Affirming the decision of U.S. District Court Magistrate Judge Edward M. Chen of the Northern District of California, the panel said The Law Offices of Recordon & Recordon in San Diego had purposefully directed its infringing activities to the forum where Brayton Purcell LLP was located and caused it to suffer foreseeable harm to its business reputation.

Brayton Purcell markets itself as a leader in elder abuse law. The 50-plus member firm has offices in Oregon and Utah, and has clients nationwide. The firm also maintains an extensive website, copyrighted in 2002, providing information on its elder abuse practice.

After Brayton Purcell discovered a website operated by Recordon & Recordon consisting of material copied verbatim, without attribution, from its website, it filed suit for copyright infringement, unfair competition, false advertising and common law misappropriation.

Recordon & Recordon

Recordon & Recordon, which was formed in 1980 by family law practitioner Kathy Recordon and personal injury lawyer Stephen Recordon, insisted that its website “was designed for information only, was passive in nature and was directed toward prospective clients located in San Diego County.”

Recordon & Recordon filed a motion seeking dismissal of Brayton Purcell’s action due to a lack of personal jurisdiction or improper venue, arguing that its practice area was limited to Southern California and that it does not have, nor has it ever had, any clients in the Northern District of California.

It also claimed that it had never conducted any business, owned any property or maintained an address or telephone listing in that forum.

After Chen denied Recordon & Recordon’s motion, the parties agreed to submit to binding arbitration. The arbitrator found in favor of Brayton Purcell and judgment was entered accordingly.

Recordon & Recordon appealed the denial of its motion to dismiss for improper venue, but not the entry of judgment on the arbitration award.

Writing for the appellate court, Judge Dorothy W. Nelson explained that the proper venue in a copyright infringement action is any judicial district in which the defendant would be amenable to personal jurisdiction if the district were a separate state.

Minimum Contacts

For a party to have sufficient minimum contacts with a district to be susceptible to personal jurisdiction, that party must have committed an intentional act expressly aimed at the forum state causing foreseeable harm in that forum, she said.

Nelson reasoned that Recordon & Recordon committed an intentional act aimed at the forum when it allegedly created and posted an elder law section on its website that infringed Brayton Purcell’s copyright, but cautioned that maintenance of a passive website alone cannot satisfy the “express aiming” prong.

Operating a passive website in conjunction with “something more” directly targeting the forum, however, is sufficient to confer personal jurisdiction, she added.

As Brayton Purcell asserted that Recordon & Recordon “willfully, deliberately and knowingly” made commercial use of its copyrighted material and that very few firms have expertise in the field of elder abuse law, Nelson, taking these allegations as true, reasoned that Recordon & Recordon’s use of the infringing material placed the firm in direct competition with Brayton Purcell.

Nelson posited that Recordon & Recordon’s conduct also caused injury that it knew was likely to be suffered in the forum because prospective clients viewing the two websites were likely to be confused as to which firm had plagiarized from the other and could erroneously conclude Brayton Purcell was the infringing party, which would harm its business reputation and goodwill and thereby decrease its business and profits.

Joined by Judge Mary M. Schroeder, Nelson concluded that Recordon & Recordon’s alleged infringement was therefore a sufficient basis to confer specific personal jurisdiction and venue in the Northern District was proper.

‘Targeted’ Conduct

However, Judge Stephen Reinhardt disagreed, writing that majority’s conclusion that Recordon & Recordon’s conduct was “targeted” at the Northern District because it allegedly knew that Brayton Purcell was a resident of that district, and that it committed an intentional tort causing foreseeable harm to Brayton Purcell, was insufficient to establish that Recordon & Recordon had aimed its conduct at the forum.

Any competition between the firms or confusion of potential clients occurred exclusively in the Southern District, and “the only fact linking Recordon & Recordon’s actions to the Northern District was its knowledge of Brayton Purcell’s residence in that district,” he commented.

Writing that “express aiming” in these circumstances leaves every website operator vulnerable to the possibility “he will be hailed into far-away courts based upon allegations of intellectual property infringement, if he happens to know where the alleged owner of the property rights resides,” Reinhardt said that “[d]ue process and basic principles of fairness prohibit such an expansive exercise of personal jurisdiction.”

The case is Brayton Purcell LLP v. Recordon & Recordon, 07-15383.


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