Boehm et al v. Zimprich et al

Filing 21

MEMORANDUM OPINION & ORDER re: 11 MOTION to Dismiss filed by Ciara Zimprich, Dan Zimprich. For the foregoing reasons, the Clerk of Court is directed to TRANSFER this action to the United States District Court for the Western District of Wisconsin pursuant to 28 U.S.C. § 1406(a). (Signed by Judge Paul A. Crotty on 12/13/2013) (rsh)

USDC SDNY
DOCUMENT
ELECTRONICALLY FILED
DOC #: _________________
DATE FILED: December 13, 2013

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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:
:
SCOTT BOEHM and DAVID STLUKA,
:
:
Plaintiffs,
:
:
-against:
DAN ZIMPRICH, CIARA ZIMPRICH, and :
:
LEGENDS OF THE FIELD, LLC,
:
:
Defendants.
:
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13 Civ. 1031 (PAC)

MEMORANDUM OPINION &
ORDER

HONORABLE PAUL A. CROTTY, United States District Judge:
In this case, Plaintiffs Scott Boehm and David Stluka allege that Defendants made
unauthorized use of Plaintiffs’ copyrighted photographs. Defendants Dan and Ciara Zimprich
now move for an order dismissing the Complaint for lack of personal jurisdiction and for forum
non conveniens, or, in the alternative, transferring the action to “the federal district court in
Madison, Wisconsin.” For the reasons set forth below, the action is TRANSFERRED to the
Western District of Wisconsin.
BACKGROUND
Plaintiffs are professional photographers who specialize in sports-related photography.
(Compl. ¶¶ 11–12.) During the time relevant to this case, they licensed their photographs
through Getty Images (US), Inc. (“Getty Images” or “Getty”). (See Compl. ¶¶ 14, 36.) Their
Complaint alleges that Defendants infringed their copyrights by exceeding the limited scope of
the inexpensive “editorial” licenses that Defendants purchased through Getty Images, and in
some cases by copying the photographs without ever purchasing a license. (Compl. ¶¶ 19–20,
1

26.)
None of the parties are New York residents. Defendants Dan and Ciara Zimprich are
Wisconsin residents. (Defs.’ Op. Br. 2.) Defendant Legends of the Field, LLC (“Legends”)
allegedly has corporate offices and retail stores in Wisconsin, and previously operated a store in
Illinois. (Compl. ¶ 7.)1 Plaintiffs Stluka and Boehm do not dispute that they are residents of
Wisconsin and Illinois, respectively. (See Defs.’ Op. Br. 2.) The Zimpriches’ alleged infringing
activity—i.e., the copying and sales of Plaintiffs’ works—occurred in Wisconsin. (Compl. ¶ 6;
Pls.’ Br. 11.)
This case’s only nexus with New York is through Defendants’ use of non-party Getty
Images’ website to obtain licenses for Plaintiffs’ photographs. Although Getty is headquartered
in Seattle, its “edit desk” for its sports collection photos is in New York. (Pls.’ Br. 2.) Plaintiffs
contend that “Getty Images’ New York office thus was responsible for editing and uploading
Plaintiffs’ images to its website and also handled licensing of their works.” (Id. at 3.) Plaintiffs
also argue that two facts should have put Defendants on notice that they were making contacts
with New York when using Getty’s website. First, Defendants could have (but need not have)
navigated to the “Contact Us” page, which lists Getty’s New York location, among three others.
(See Pls.’ Br. 3.) Second, the license agreements provided that they were governed by New York
law and were subject to arbitration in one of a list of cities that was closest to Defendants—in
this case, New York. (Pls.’ Br. 6.)2 Plaintiffs do not dispute that Defendants never sold or
advertised their products in New York or physically entered the state. (See Defs.’ Br. 2–3.)

1

Legends has not appeared in this case or responded to the Complaint.

2

Plaintiffs are not seeking to compel arbitration as third-party beneficiaries; rather, they cite the arbitration clause as
relevant to the issues of personal jurisdiction and venue. (Pls.’ Br. 7.)

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DISCUSSION
I.

Legal Standards
“[A] federal court has leeway ‘to choose among threshold grounds for denying audience

to a case on the merits.’” Sinochem Int’l Co. Ltd. v. Malaysia Int’l Shipping Corp., 549 U.S.
422, 431 (2007). In particular, under 28 U.S.C. § 1406(a), a court may transfer an improperly
venued case “whether the court in which it was filed had personal jurisdiction over the
defendants or not.” Goldlawr, Inc. v. Heiman, 369 U.S. 463, 466 (1962). Indeed, “‘the interest
of justice’ may require that the complaint not be dismissed but rather that it be transferred in
order that the plaintiff not be penalized by . . . ‘time-consuming and justice-defeating
technicalities.’” Id. at 467.
“The venue of suits for infringement of copyright is not determined by the general
provision governing suits in the federal district courts.” Lumiere v. Mae Edna Wilder, Inc., 261
U.S. 174, 176 (1923) (Brandeis, J.). Instead, civil actions “arising under” federal copyright law
are governed by a special venue provision, 28 U.S.C. § 1400(a). See Atl. Marine Const. Co., Inc.
v. U.S. Dist. Court for W. Dist. of Texas, No. 12-929, 2013 WL 6231157, at *6 n.2 (U.S. Dec. 3,
2013) (noting that § 1400 “identif[ies] proper venue for copyright and patent suits,” while
“[s]ection 1391 governs ‘venue generally,’ that is, in cases where a more specific venue
provision does not apply”). That statute provides that copyright cases are properly venued “in
the district in which the defendant or his agent resides or may be found.” Courts have held that
“[a] defendant ‘may be found’ in any district in which he is subject to personal jurisdiction.”
E.g., Lipton v. The Nature Co., 781 F. Supp. 1032, 1035 (S.D.N.Y. 1992), aff’d, 71 F.3d 464 (2d
Cir. 1995); Capitol Records, LLC v. VideoEgg, Inc., 611 F. Supp. 2d 349, 365 (S.D.N.Y. 2009).
Personal jurisdiction, in turn, is authorized by “the long-arm statute of the forum state”
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and limited by “the requisites of due process.” Whitaker v. Am. Telecasting, Inc., 261 F.3d 196,
208 (2d Cir. 2001). New York’s long-arm statute “provides, in pertinent part, that a court ‘may
exercise personal jurisdiction over any non-domiciliary . . . who in person or through an agent
. . . transacts any business within the state,’ so long as the plaintiff’s ‘cause of action aris[es]
from’ that ‘transact[ion].’” Licci ex rel. Licci v. Lebanese Canadian Bank, SAL, 673 F.3d 50, 60
(2d Cir. 2012) (quoting N.Y. C.P.L.R. § 302(a)).3 “The New York Court of Appeals has
explained that ‘the overriding criterion necessary to establish a transaction of business is some
act by which the defendant purposefully avails itself of the privilege of conducting activities
within New York,’ thereby ‘invoking the benefits and protections of its laws.’” Id. at 61
(citations omitted). “[T]he ultimate determination is based on the totality of the circumstances.”
Sunward Electronics, Inc. v. McDonald, 362 F.3d 17, 23 (2d Cir. 2004).
II.

Analysis
Here, there is no basis upon which any Defendant “may be found” in this District to

support venue under 28 U.S.C. § 1400(a).4 Defendants’ sole connection with New York is that
they purchased the licenses at issue through Getty’s website and consented to an adhesive
contract that included a New York choice-of-law clause and a New York arbitration clause.
Defendants cannot reasonably be charged with knowing that the division within Getty that was
responsible for handling Plaintiffs’ photographs was in New York. And while Defendants are
bound by the terms of any license agreements to which they consented, the presence of the cited

3

The other bases for personal jurisdiction in Section 302(a)—e.g., a “tortious act within the state” or “causing injury
to person or property within the state”—have not been raised here. (See Pls.’ Br. 8 (arguing personal jurisdiction on
the basis that Defendants “transacted business” in New York).)
4

Although Plaintiffs also assert a fraud claim, the venue determination is governed by the copyright venue statute
because the asserted basis for federal subject matter jurisdiction is that the case “arises under” federal copyright law.
See 28 U.S.C. § 1400(a).

4

clauses referring to New York does not demonstrate that Defendants “purposefully avail[ed]
[themselves] of the privilege of conducting activities within New York.” Cf. Sandoval v. Abaco
Club on Winding Bay, 507 F. Supp. 2d 312, 316 (S.D.N.Y. 2007) (“[T]he mere existence of a
contract with a New York corporation is not sufficient to constitute the transaction of business
under § 302(a)(1) of the CPLR.”). Nor is this a case where Defendants have “actively
‘project[ed]’ [themselves] into New York events, such as by actively participating in a New
York art auction by telephone.” Worldwide Futgol Assocs. v. Event Entm’t, Inc., 983 F. Supp.
173, 177 (E.D.N.Y. 1997) (citing Parke–Bernet Galleries, Inc. v. Franklyn, 256 N.E.2d 506, 508
(N.Y. 1970)).
Because this District is the “wrong” venue for this case, the Court may “transfer [the]
case to any district or division in which it could have been brought,” provided that “it be in the
interest of justice.” 28 U.S.C. § 1406(a).5 The Court finds it in the interest of justice to transfer
this case to the Western District of Wisconsin to prevent further delay. The requirements of
personal jurisdiction and venue are clearly satisfied there with respect to the Zimpriches, who
allegedly engaged in the infringing conduct in Madison, Wisconsin.

5

Defendants’ reference to the doctrine of forum non conveniens is inapposite. That doctrine was codified into 28
U.S.C. § 1404(a) for cases where, as here, “the transferee forum is within the federal court system.” Atl. Marine,
2013 WL 6231157, at *10. The Court need not address the various factors cited by the parties regarding “the
convenience of the parties and the witnesses” under § 1404(a) because the Court transfers the case instead under
§ 1406(a), which merely requires that venue be “wrong” and transfer in the “interest of justice.” See generally 15
Wright, Miller, et al., Federal Practice & Procedure § 3842 (4th ed.) (“Section 1404(a) presupposes that the district
court in which suit was filed is a proper venue.”).

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CONCLUSION
For the foregoing reasons, the Clerk of Court is directed to TRANSFER this action to the
United States District Court for the Western District of Wisconsin pursuant to 28 U.S.C. §
1406(a).

Dated: New York, New York
December ___, 2013
13
SO ORDERED

________________________
PAUL A. CROTTY
United States District Judge

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