55 Pages Posted: 6 Aug 2010 Last revised: 31 Jan 2014
Date Written: July 1, 2010
In declaratory judgment actions brought by alleged infringers against rights holders, such as actions for declaration of invalidity or non-infringement of intellectual property rights, U.S. courts have long maintained that sending a cease-and-desist letter alone, absent other acts in an alleged infringer's forum, is not a sufficient basis for personal jurisdiction over the rights holder who mailed them to the alleged infringer's forum. Notwithstanding the similarities between cease-and-desist letters and notifications under the Digital Millennium Copyright Act (DMCA), the Tenth Circuit Court of Appeals recently decided that sending a notification alone does establish a basis for personal jurisdiction over the rights holder.
Contrary to the decision of the Tenth Circuit, this article suggests that cease-and-desist letters and DMCA notifications should be treated similarly. First, as a matter of doctrine, the two instruments are similar enough to warrant application of the same rule. If a letter does not support the exercise of personal jurisdiction in declaratory judgment actions against the rights holder, neither should a notification.
Second, as a matter of policy, maintaining the same approach to the two instruments would promote settlements. The Tenth Circuit's approach defeats this pro-settlement policy because it discourages rights holders from using notifications to achieve a speedy removal of allegedly infringing material from the Internet. To avoid personal jurisdiction in the infringer's forum, rights holders must refrain from using a notification and are thereby deprived of the option to stop further infringements immediately; without such an option they are less likely to seek settlement before filing a lawsuit. It is important to clarify whether notifications will be a basis of personal jurisdiction over a rights holder because the result will determine how practicable the use of notifications will be for rights holders and therefore how effective the notification system will be.
Keywords: copyright, personal jurisdiction, declaratory judgment, civil procedure, DMCA
Suggested Citation: Suggested Citation
Trimble, Marketa, Setting Foot on Enemy Ground: Cease-and-Desist Letters, DMCA Notifications, and Personal Jurisdiction in Declaratory Judgment Actions (July 1, 2010). IDEA: The Journal of Law and Technology, Vol. 50, p. 777, 2010; UNLV William S. Boyd School of Law Legal Studies Research Paper No. 10-42. Available at SSRN: https://ssrn.com/abstract=1653965