8:20-cv-00109-JFB-CRZ Doc # 39 Filed: 11/13/20 Page 1 of 21 - Page ID # 292
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF NEBRASKA
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`INFOGROUP INC., Delaware corporation;
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`Plaintiff,
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`vs.
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`OFFICE DEPOT,
`corporation;
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`INC., a Delaware
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`Defendant.
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`8:20CV109
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`MEMORANDUM AND ORDER
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`This matter is before the Court on defendant Office Depot, Inc.’s (“Office Depot”)
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`motion to dismiss and to compel arbitration/mediation, Filing No. 14.1 This is an action
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`for copyright infringement under the Federal Copyright Act, 17 U.S.C. § 501. Office
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`Depot moves to dismiss Infogroup’s complaint for lack of subject matter jurisdiction,
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`under Federal Rules of Civil Procedure 12(b)(1), for lack of personal jurisdiction under
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`Federal Rule of Civil Procedure 12(b)(2), for improper venue under Federal Rule of Civil
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`Procedure 12(b)(3), and for failure to state a claim for which relief may be granted under
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`Federal Rule of Civil Procedure 12(b)(6), or, alternatively, to compel mediation pursuant
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`to a contract between the parties.
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`I.
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`BACKGROUND
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`In its complaint, Infogroup, a business intelligence company, alleges that Office
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`Depot misappropriated its copyrighted information database. Infogroup first describes
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`its copyright ownership interest in the “Infogroup U.S. Business Database” and attaches
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`three copyright registrations. Filing No. 1, Complaint at 2, Ex. A, 2017 Copyright
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`1 Also pending is a motion for a hearing, Filing No. 37. The Court finds the matter can be resolved
`without a hearing and the motion will be denied.
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`1
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`Registration, Ex. B, 2018 Copyright Registration, and Ex. C, 2019 Copyright
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`Registration. Infogroup alleges it sold the copyrighted database—containing addresses,
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`email addresses, other contact information collected from publicly available sources
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`over the years, and some of the data that was not obtained from outside sources,
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`including predicted market preferences, resolution of conflicting data, and proprietary
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`modelling of unavailable business information—data to Office Depot. Id. at 3. It alleges
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`Office Depot obtained full electronic copies of Infogroup’s Business Database between
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`February 22, 2018 and April 3, 2019 via transfers from Infogroup to Office Depot. Id. It
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`contends Office Depot infringed its copyrights by using the U.S. Business Database “to
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`supply business data for use in Office Depot’s mapping program, which is designed with
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`multiple functions, including functions that allow Office Depot to understand small and
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`medium business opportunities near its current business locations and identify new
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`potential business locations.” Id. It alleges that “Office Depot used Infogroup’s
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`Business Database in its Mapping Program without Infogroup’s knowledge, consent, or
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`authorization.” Id. Infogroup seeks monetary damages under 17 U.S.C. § 504, an
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`accounting of Office Depot’s use of Infogroup’s Business Database, and of the benefits
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`(financial and otherwise) that accrued to Office Depot from such use; and injunctive
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`relief under 17 U.S.C. § 503 (including impounding and destruction of all portions of the
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`Infogroup’s Business Database incorporated into Office Depot’s mapping program);
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`costs and attorney fees; as well as such other relief as the Court deems proper. Id. at
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`6-7.
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`Office Depot contends that Infogroup granted it an express license to use the
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`database. In support of its motion, Office Depot submits the declarations of Makund
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`2
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`Padmanabhan, Office Depot’s Senior Director of Market Research, and Damon Lewis,
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`Counsel for Office Depot, and attached exhibits, including series of written contracts
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`known collectively as the Master Client Services Agreement (“MCSA”) together with
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`amendments known as “Statements of Services” (“SOS”)(collectively, “the Agreement”)
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`that Office Depot and Infogroup executed over the span of a decade for use of a copy of
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`components of
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`Infogroup’s database.
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` Filing No. 25, Declaration of Makund
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`Padmanabhan (“Padmanabhan Decl.”); Filing No. 26, Declaration of Damon Lewis,
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`(“Lewis Decl.”), Filing No. 16, Index of Evid., Filing Nos. 18-24, Exhibits. Evidence
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`submitted by Office Depot shows that the parties entered into the Agreement in 2009, it
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`lapsed in 2016, but was renegotiated in 2017 to provide for location information
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`including longitude and latitude for a term of three years. Filing No. 25, Padmanabhan
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`Decl. at 1-3.
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`The original MCSA provided the “[t]his Agreement shall be construed and
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`governed in accordance with the laws of the State of Florida,” and also waived rights to
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`a jury trial. The Agreement also included a dispute resolution clause providing that
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`in the event a dispute should arise under this Agreement or relating in any
`manner hereto, the parties agree to attempt to mediate their dispute prior
`to the commencement of formal litigation (i.e., the filing of a lawsuit or
`other legal proceeding), using a third party mediator. Any mediation shall
`take place in Palm Beach County, Florida, unless otherwise agreed to by
`the parties . . . .
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`Filing No. 26, Lewis Decl. at 1, Filing No. 19, Ex. 3, MCSA at 4. That provision is limited
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`by the following language: “In the event a party seeks equitable relief (such as injunctive
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`relief or specific performance) . . . then there shall be no requirement that such party
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`utilize the mediation process referred to herein.” Id. at 4-5. In his declaration,
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`Padmanabhan states that the parties understood that the data Infogroup would provide
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`3
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`would be used for internal research and analytics. Filing No. 25, Padmanabhan Decl. at
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`2-3. He also states that Office Depot informed Infogroup that it would not renew its
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`contracts in or around March 2019 and the data Office Depot received from Infogroup
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`was destroyed shortly thereafter, before the overall contract expired on May 8, 2020.
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`Id. at 3.
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`Office Depot’s motions to dismiss for lack of subject matter and personal
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`jurisdiction, improper venue and failure to state a claim are inter-related.2 Office
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`Depot’s motion to dismiss for lack of subject matter jurisdiction is based on the
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`arguments that 1) the matter is not ripe for adjudication because mediation is a
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`condition precedent to suit, and 2) that there is no federal question jurisdiction because
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`the complaint refers on its face to a license agreement, meaning the action is based on
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`contract. Office Depot essentially argues that Infogroup carefully crafted its complaint to
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`avoid what is essentially a breach of contract action in order to manufacture jurisdiction
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`where there is none. It next contends that this court lacks personal jurisdiction over
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`Office Depot because there are insufficient minimum contacts with Nebraska. Then, it
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`contends venue is improper because: first, the Court lacks jurisdiction; and second,
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`because Office Depot does not reside in Nebraska, Office Depot cannot be found in
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`Nebraska, and none of Office Depot’s purported actions giving rise to Plaintiff’s claims
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`actually occurred in Nebraska. It further argues that Infogroup has not alleged a
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`2 In its reply brief, Office Depot states:
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`Of f ice Depot seeks dismissal and an order compelling Infogroup to mediate this matt er.
`(Brief at 1.) If the Court finds no subject matter jurisdiction and no personal jurisdiction, it
`must dismiss. (Id. at 12). If the Court finds there is federal subject matter jurisdiction but
`no personal jurisdiction, the Court should transfer the case to t he S outhern D is trict of
`Florida. (Id. at 28).
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`Filing No. 38, Reply Brief at 6 n.3.
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`4
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`potential violation of at least one exclusive right under the Copyright Act because it
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`alleges only that it gave Office Depot the copyrighted material (arguably under an
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`express or implied license) and Office Depot used it, which does not state a claim for
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`relief under the Copyright Act.
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`In response, Infogroup argues the Court has subject matter jurisdiction because
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`its complaint plainly details a copyright claim, which creates federal question jurisdiction.
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`Infogroup argues that its copyright claim arises out of Office Depot’s unauthorized,
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`infringing use of Infogroup’s U.S. Business Database and is not based on any contract
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`with Infogroup. It argues it is entitled to choose its remedy, contending the dispute
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`resolution clause of the Agreement is not applicable to its copyright cause of action.
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`Also, it contends Office Depot’s use of Infogroup’s U.S. Business Database to create
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`the store locator mapping program is not a permitted use under the license. Infogroup
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`also contends that this Court has personal jurisdiction over Office Depot because Office
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`Depot has consented to general personal jurisdiction in Nebraska, and the Court has
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`specific jurisdiction because Office Depot aimed its tortious conduct at Nebraska and
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`the effects of the tortious conduct were felt in Nebraska. It states it adequately alleges a
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`claim for relief under the Copyright Act and argues that the licensing issue is an
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`affirmative defense. Further, it argues that venue is proper because the Court has
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`personal jurisdiction over the defendant. Infogroup submits the declaration of Terri
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`Gibbons and attached documents showing that Office Depot does business in Nebraska
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`and has a resident agent in Nebraska. Filing No. 32, Index of Evid.
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`5
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`II.
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`LAW
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`A.
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`Fed. R. Civ. P. 12(b)(1)
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`Jurisdiction is a threshold issue for this Court. See Steel Co. v. Citizens for a
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`Better Env’t, 523 U.S. 83, 94-96 (1998); see also Arbaugh v. Y & H Corp., 546 U.S. 500,
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`507 (2006) (“The objection that a federal court lacks subject-matter jurisdiction . . . may
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`be raised by a party, or by a court on its own initiative, at any stage in the litigation, even
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`after trial and the entry of judgment.”). The party seeking to invoke federal jurisdiction
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`carries the burden of proof on that issue. See DaimlerChrysler Corp. v. Cuno, 547 U.S.
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`332, 342 (2006); V S Ltd. P’ship v. Dep’t of Hous. & Urban Dev., 235 F.3d 1109, 1112
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`(8th Cir. 2000).
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`A complaint can be challenged under Fed. R. Civ. P. 12(b)(1) either “on its face
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`or on the factual truthfulness of its averments.” Titus v. Sullivan, 4 F.3d 590, 593 (8th
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`Cir. 1993). “In a facial challenge to jurisdiction, all of the factual allegations concerning
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`jurisdiction are presumed to be true and the motion is successful if the plaintiff fails to
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`allege an element necessary for subject matter jurisdiction.” Id. In a factual attack on
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`the
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`jurisdictional allegations of
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`the complaint, however, the court can consider
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`competent evidence such as affidavits, deposition testimony, and the like in order to
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`determine the factual dispute. Id.
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`Under 28 U.S.C. § 1331, this Court has jurisdiction over “all civil actions arising
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`under the Constitution, laws, and treaties of the United States.” Under 28 U.S.C. §
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`1338(a), the district courts have “original jurisdiction of any civil action arising under any
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`Act of Congress relating to patents, plant variety protection, copyrights and trademarks”
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`and “no state court shall have jurisdiction over any claim of relief arising under such
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`6
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`8:20-cv-00109-JFB-CRZ Doc # 39 Filed: 11/13/20 Page 7 of 21 - Page ID # 298
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`Acts of Congress.” An action “arises under” the Copyright Act if the complaint seeks a
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`remedy expressly granted by the Act, asserts a claim requiring construction of the Act,
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`or presents a case where a distinctive policy of the Act requires that federal principles
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`control the disposition of the claim. T.B. Harms Co. v. Eliscu, 339 F.2d 823, 828 & n.3.
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`(2d Cir. 1964) (Friendly, J.).
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` “The test outlined in T.B. Harms is essentially a reiteration of the ‘well-pleaded
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`complaint’ rule that federal jurisdiction exists only when a federal question is presented
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`on the face of a properly pleaded complaint.” Scholastic Entm't, Inc. v. Fox Entm't Grp.,
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`Inc., 336 F.3d 982, 986 (9th Cir. 2003). The analysis under T.B. Harms turns on what is
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`alleged on the face of the complaint, rather than the “essence-of-the-dispute or merely-
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`incidental test [which] looks rather at what defense will be proffered.” Bassett v.
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`Mashantucket Pequot Tribe, 204 F.3d 343, 349 (2d Cir. 2000) (rejecting the complex
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`test set out in Schoenberg v. Shapolsky Publishers, Inc., 971 F.2d 926, 931-32 (2d Cir.
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`1992), for evaluating infringement /contract claims as unworkable, vague, and because
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`it would “require the court to make complex factual determinations relating to the merits
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`at the outset of the litigation—before the court has any familiarity with the case”).3 “The
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`T.B. Harms test has been adopted by all the circuits that have considered the question
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`whether a suit arises under the Copyright Act for purposes of Section 1338, if the
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`disputed issues include non-copyright matters.” Bassett, 204 F.3d at 350; see also
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`3 Of f ice Depot relies on a line of cases from the Second Circuit, including Luk asewyc h v. Wells, Ric h,
`Greene, Inc., 747 F. Supp. 1089, 1093 (S.D.N.Y. 1990), that adopted the ap proach lat er desc ribed in
`Schoenberg, 971 F.2d at 931-32 (finding a f acial allegation of infringement was ins uf f icient t o conf er
`f ederal jurisdiction, instead, district courts were required to must go behind the face of the complaint and
`use a three-part test to determine the true “essence” of the complaint). The Schoenberg ap proach was
`abrogated in Bassett, 204 F.3d at 351-52. See LC Franchisor, LLC v. Valley Beef , LLC, No. 4: 15-CV-
`00383 JCH, 2015 WL 4067054, at *4 (E.D. Mo. July 2, 2015) (noting pre-Bassett split of authority within
`the Second Circuit over application of the T.B. Harms standard—with courts on one side looking at t he
`f ace of the complaint to determine whether one of the T.B. Harms elements applied, and court s o n t he
`other looking beyond the face of the complaint to determine the “essence” of the dispute).
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`7
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`1mage Software, Inc., v. Reynolds and Reynolds Co., 459 F.3d 1044, 1048–51 (10th
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`Cir. 2006) (adopting and applying T.B. Harms approach); Scholastic Entm’t, 336 F.3d at
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`986 (identifying T.B. Harms as majority rule); Scandinavian Satellite Sys., AS v. Prime
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`TV Ltd., 291 F.3d 839, 844–45 (D.C. Cir. 2002) (also adopting Second Circuit’s
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`analytical approach); MCA Television Ltd. v. Pub. Interest Corp., 171 F.3d 1265, 1269
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`(11th Cir. 1999) (acknowledging approval of T.B. Harms test and rejecting argument
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`that that the district court lacked subject matter jurisdiction because the case did not
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`“arise under” the Copyright Act, but was merely a breach of contract claim); Arthur
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`Young & Co. v. City of Richmond, 895 F.2d 967, 969–70 (4th Cir. 1990) (“Judge
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`Friendly, in T.B. Harms Co. v. Eliscu, set out what has remained the definitive
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`jurisdictional test for copyright cases[.]”) (citation omitted)); Royal v. Leading Edge
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`Prods., Inc., 833 F.2d 1, 2 (1st Cir. 1987) (applying T.B. Harms as “[t]he most frequently
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`cited test”); Goodman v. Lee, 815 F.2d 1030, 1031 (5th Cir. 1987) (adopting the T.B.
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`Harms test); Vestron, Inc. v. Home Box Office Inc., 839 F.2d 1380, 1381 (9th Cir. 1988)
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`(“We have settled on Judge Friendly's formulation of copyright jurisdiction law as our
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`test[.]”). Among the problems noted in connection with the “essence” approach was that
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`it “left a class of plaintiffs who suffered copyright infringement bereft of copyright
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`remedies” because state courts have no jurisdiction to grant remedies under the
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`Copyright Act. Bassett, 204 F.3d at 348, 352.
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`B.
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`Fed. R. Civ. P. 12(b)(2)
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`“To survive a motion to dismiss for lack of personal jurisdiction, a plaintiff must
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`make a prima facie showing that personal jurisdiction exists, which is accomplished by
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`pleading sufficient facts ‘to support a reasonable inference that the defendant[ ] can be
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`8
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`subjected to jurisdiction within the state.’” K-V Pharm. Co. v. J. Uriach & CIA, S.A., 648
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`F.3d 588, 591–92 (8th Cir. 2011) (quoting Dever v. Hentzen Coatings, Inc., 380 F.3d
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`1070, 1072 (8th Cir. 2004) (original brackets and internal quotation marks omitted)).
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`The “‘evidentiary showing required at the prima facie stage is minimal[.]’” Id. at 592
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`(quoting Johnson v. Arden, 614 F.3d 785, 794 (8th Cir. 2010) (internal quotation marks
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`omitted)). However, once personal jurisdiction has been controverted, the plaintiff’s
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`prima facie showing “‘must be tested, not by the pleadings alone, but by the affidavits
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`and exhibits presented with the motions or in opposition thereto.” Dever, 380 F.3d at
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`1072 (quoting Block Indus. v. DHJ Indus., Inc., 495 F.2d 256, 259 (8th Cir. 1974)).
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`Although the plaintiff bears the ultimate burden of proof on the issue, if the district court
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`does not hold a hearing and instead relies on pleadings and affidavits, the court must
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`look at the facts in the light most favorable to the nonmoving party and resolve all
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`factual conflicts in favor of that part. Dakota Indus., Inc. v. Dakota Sportswear, Inc., 946
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`F.2d 1384, 1387 (8th Cir. 1991).
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`There are two steps in the personal jurisdiction inquiry: (1) the exercise of
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`jurisdiction must satisfy the forum state’s long-arm statute, and (2) the nonresident must
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`have sufficient ‘minimum contacts’ with the forum state to comport with requirements of
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`due process. Stanton v. St. Jude Medical, Inc., 340 F.3d 690, 693 (8th Cir. 2003).
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`Since the Nebraska long-arm statute extends jurisdiction to the outer boundaries of due
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`process, the personal jurisdiction analysis merges into a single due process inquiry. Id.
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`The minimum contacts necessary for due process may be the basis for either “general”
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`or “specific” jurisdiction. Johnson, 614 F.3d at 794; see Bristol-Myers Squibb Co. v.
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`Superior Ct. of Cal., 137 S. Ct. 1773, 1780 (2017) (noting that courts recognize “two
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`9
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`types of personal jurisdiction: ‘general’ (sometimes called ‘all-purpose’) jurisdiction and
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`‘specific’ (sometimes called ‘case-linked’) jurisdiction.” (quoting Goodyear Dunlop Tires
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`Ops., S.A. v. Brown, 564 U.S. 915, 919 (2011)).
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`General jurisdiction allows a court to hear “any and all claims” against a
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`defendant. Goodyear, 564 U.S. at 919. “[G]eneral jurisdiction requires affiliations “so
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`‘continuous and systematic’ as to render [the foreign corporation] essentially at home in
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`the forum State[,] i.e., comparable to a domestic enterprise in that State.” Daimler AG
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`v. Bauman, 571 U.S. 117, 133 n.11 (2014) (quoting Goodyear, 564 U.S. at 919); accord
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`Viasystems, 646 F.3d at 595. The general jurisdiction inquiry addresses the scope of a
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`court's adjudicatory authority when an entity “‘has not consented to suit in the forum.’”
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`Daimler AG, 571 U.S. at 129 (quoting Goodyear, 564 U.S. at 928).
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`“Specific jurisdiction is proper ‘only if the injury giving rise to the lawsuit occurred
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`within or had some connection to the forum state, meaning that the defendant purposely
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`directed its activities at the forum state and the claim arose out of or relates to those
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`activities.’” Johnson, 614 F.3d at 795 (quoting Steinbuch v. Cutler, 518 F.3d 580, 586
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`(8th Cir. 2008)); see Daimler AG, 571 U.S. at 127); Walden v. Fiore, 571 U.S. 277, 284
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`(2014) (“For a State to exercise jurisdiction consistent with due process, the defendant's
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`suit-related conduct must create a substantial connection with the forum State.”)
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`Courts evaluating personal jurisdiction consider: (1) the nature and quality of the
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`defendant’s contacts with the forum state; (2) the quantity of the defendant’s contacts;
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`(3) the relationship of the cause of action to the defendant’s contacts; (4) the interest of
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`[the forum state] in providing a forum for its residents; and (5) the convenience or
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`inconvenience to the parties. Pederson v. Frost, 951 F.3d 977, 980 (8th Cir. 2020). A
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`10
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`plaintiff can also obtain specific personal jurisdiction over a nonresident defendant by
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`employing the “effects test” set out in Calder v. Jones, 465 U.S. 783, 789-90 (1984).
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`Johnson, 614 F.3d at 796. “Calder requires the consideration of additional factors when
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`an intentional tort is alleged.” Id. at 797. The “effects” test provides that a defendant's
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`tortious acts can serve as a source of personal jurisdiction only “‘where the plaintiff
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`makes a prima facie showing that the defendant's acts (1) were intentional, (2) were
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`uniquely or expressly aimed at the forum state, and (3) caused harm, the brunt of which
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`was suffered-and which the defendant knew was likely to be suffered-[in the forum
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`state].’” Id. at 796 (quoting Lindgren v. GDT, LLC, 312 F. Supp. 2d 1125, 1132 (S.D.
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`Iowa 2004) (internal quotations and citation omitted)). “This test ‘allows the assertion of
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`personal jurisdiction over non-resident defendants whose acts are performed for the
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`very purpose of having their consequences felt in the forum state.’” Id. (quoting Dakota
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`Indus., Inc., 946 F.2d at 1390–91).
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`There
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`is “a sharp distinction between
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`‘mere untargeted negligence’ and
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`‘intentional, and allegedly tortious, actions’ aimed expressly at the forum state.” Dakota
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`Indus., 946 F.2d at 1390 (quoting Calder, 465 U.S. at 789). “Although the defendant's
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`lack of control over the injurious result may weigh against jurisdiction in a negligence
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`action, that lack of control will not bar jurisdiction when an injured party has alleged an
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`intentional tort.” Id. Copyright infringement is an intentional tort. See id. at 1391.
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`“‘Damage
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`to intellectual property rights (infringement of a patent, trademark or
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`copyright) by definition takes place where the owner suffers the damage.’” Id. at 1388
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`(quoting Acrison, Inc. v. Control & Metering, Ltd., 730 F. Supp. 1445, 1448 (N.D. Ill.
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`11
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`1990)). A corporation suffers economic injury at its principal place of business. Id. at
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`1388-89.
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`
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`Consent is another traditional basis of jurisdiction, existing independently of long-
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`arm statutes. Knowlton v. Allied Van Lines, 900 F.2d 1196, 1199 (8th Cir. 1990). A
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`defendant may voluntarily consent or submit to the jurisdiction of a court which
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`otherwise would not have jurisdiction over it. Id. “One of the most solidly established
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`ways of giving such consent is to designate an agent for service of process within the
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`State.” Id. “Such consent is a valid basis of personal jurisdiction, and resort to
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`minimum-contacts or due-process analysis to justify the jurisdiction is unnecessary.” Id.
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`at 1200; see also Ins. Corp. of Ireland v. Compagnie des Bauxites de Guinee, 456 U.S.
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`694, 703-04 (1982); Ytuarte v. Gruner + Jahr Printing & Pub. Co., 935 F.2d 971, 973
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`(8th Cir. 1991) (noting that appointment of an agent for service of process in Minnesota
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`gives consent to jurisdiction without regard to whether the activities giving rise to the suit
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`occurred within the state); Sondergard v. Miles, Inc., 985 F.2d 1389, 1396 (8th Cir.
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`1993) (stating a defendant that registers an agent is subject to general jurisdiction in
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`South Dakota, even if registered after a cause of action accrues).
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`C.
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`Fed. R. Civ. P. 12(b)(3)
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`“Copyright infringement claims are governed by a special venue statute, 28
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`U.S.C. § 1400(a), which provides that actions “arising under any Act of Congress
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`relating to copyrights or exclusive rights in mask works or designs m ay be instituted in
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`the district in which the defendant or his agent resides or may be found.” 28 U.S.C. §
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`1400(a).4 In construing that section, courts have generally held that a defendant may
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`4 The U.S. Supreme Court recently construed a clause in the related patent venue provision in t he same
`section, § 1400(b), which provides that a patent infringement suit may be f iled “in t he judicial dist ric t
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`12
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`8:20-cv-00109-JFB-CRZ Doc # 39 Filed: 11/13/20 Page 13 of 21 - Page ID # 304
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`be ‘found’ in any district in which personal jurisdiction may be obtained over the
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`defendant. Dakota Indus., Inc., 946 F.2d at 1392 (stating that if personal jurisdiction
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`exists at the commencement of the action, then venue is proper); see also Brayton
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`Purcell LLP v. Recordon & Recordon, 606 F.3d 1124, 1128 (9th Cir. 2010) (in copyright
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`infringement actions, venue is proper in any judicial district in which the defendant
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`would be amenable to personal jurisdiction if the district were a separate state);
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`Dudnikov v. Chalk & Vermilion Fine Arts, Inc., 514 F.3d 1063, 1069 n.2 (10th Cir. 2008)
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`(because only basis for challenging venue under copyright provisions is that the
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`absence of personal jurisdiction in a forum renders venue improper, the question of
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`venue is essentially swallowed by the jurisdictional analysis).
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`A district court is authorized, under 28 U.S.C. § 1404(a), to transfer any civil
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`action for convenience of parties and witnesses in the interest of justice to any other
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`district where it might have been brought. A district court considering a § 1404(a)
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`motion (or a forum non conveniens motion) must evaluate both the convenience of the
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`parties and various public-interest considerations. Atl. Marine Const. Co. v. U.S. Dist.
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`Ct. for W. Dist. of Tex., 571 U.S. 49, 62 (2013).5 Factors relating to the parties' private
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`interests include “relative ease of access to sources of proof; availability of compulsory
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`process for attendance of unwilling, and the cost of obtaining attendance of willing,
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`where the def endant resides.” TC Heartland, LLC v. Kraft Foods Grp. Brands , LLC , 137 S . Ct . 1514,
`1517 (2017). The Supreme Court unanimously held that “a domestic corporation ‘resides' only in its State
`of incorporation for purposes of the patent venue statute.” Id. Given the similarity of language and t he
`common statutory section, this holding may apply to the “resides” copyright venue provision as well, b ut
`the case has no application here, because the alternative “may be found” language applies.
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` 5
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` A dif ferent standard applies to cases involving a contractually valid forum-selection clause. Atl. Marine,
`571 U.S. at 63. First, the plaintiff's choice of forum merits no weight; second, the court must deem t he
`private-interest factors to weigh entirely in f avor of the preselected forum and may consider arg ument s
`about public interest factors only; and third, a § 1404(a) transfer of venue will not carry with it the original
`venue's choice-of -law rules—a f actor that in some circumstances may af f ect public -interest
`considerations. Id. at 64-65.
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`8:20-cv-00109-JFB-CRZ Doc # 39 Filed: 11/13/20 Page 14 of 21 - Page ID # 305
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`witnesses; possibility of view of premises, if view would be appropriate to the action;
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`and all other practical problems that make trial of a case easy, expeditious and
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`inexpensive.” Id. at 62 n.6 (quoting Piper Aircraft Co. v. Reyno, 454 U.S. 235, 241, n. 6,
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`(1981) (internal quotation marks omitted)). Public-interest factors may include “the
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`administrative difficulties flowing from court congestion; the local interest in having
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`localized controversies decided at home; [and] the interest in having the trial of a
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`diversity case in a forum that is at home with the law.” Id. (quoting Piper Aircraft, 454
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`U.S. at 241 n.6 (internal quotation marks omitted)). The Court must also give some
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`weight to the plaintiffs' choice of forum. Id. In general, the party seeking a transfer of
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`venue bears the burden of establishing that the transfer should be granted.6 Terra Int'l,
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`Inc. v. Miss. Chem. Corp., 119 F.3d 688, 695 (8th Cir. 1997).
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`D.
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`Fed. R. Civ. P. 12(b)(6)
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`Under the Federal Rules, a complaint must contain “a short and plain statement
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`of the claim showing that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2); Bell
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`Atl. Corp. v. Twombly, 550 U.S. 544, 556 n.3. (2007); Braden v. Wal-Mart Stores, Inc.,
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`588 F.3d 585, 594 (8th Cir. 2009). “Specific facts are not necessary; the statement
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`need only ‘give the defendant fair notice of what the . . . claim is and the grounds upon
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`which it rests.’” Erickson v. Pardus, 551 U.S. 89, 93 (2007) (quoting Twombly, 550 U.S.
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`at 555). In deciding a motion to dismiss under Rule 12(b)(6), a court must accept the
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`allegations contained in the complaint as true and draw reasonable inferences in favor
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`of the nonmoving party. Cole v. Homier Dist. Co., Inc., 599 F.3d 856, 861 (8th Cir.
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`2010).
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`6 However, in the case of a valid forum-selection clause, the plaintiff, the party defying the forum-selection
`clause, “bears the burden of establishing that transfer to the forum for which the parties bargained is
`unwarranted. Atl. Marine, 571 U.S. at 63.
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`8:20-cv-00109-JFB-CRZ Doc # 39 Filed: 11/13/20 Page 15 of 21 - Page ID # 306
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`The Copyright Act Aseeks to protect >original works of authorship fixed in any
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`tangible medium of expression,= by granting to the author certain exclusive rights,@
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`including Athe right to reproduce the copyrighted work, and the right to create derivative
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`works from the copyrighted work.@ United Tel. Co. v. Johnson Publ=g Co., 855 F.2d
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`604, 607 (8th Cir. 1988) (quoting 17 U.S.C. ' 102). A copyright also grants to the owner
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`the exclusive rights to reproduce the copyrighted work and to distribute copies to the
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`public. Olan Mills v. Linn Photo, 23 F.3d 1345, 1347 (8th Cir. 1994). “The statutory
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`rights of a copyright owner include the exclusive right ‘to prepare derivative works based
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`upon the copyrighted work.’” Mulcahy v. Cheetah Learning, LLC, 386 F.3d 849, 852
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`(8th Cir. 2004) (quoting 17 U.S.C. § 106(2)). The Copyright Act broadly defines a
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`derivative work as “a work based upon one or more preexisting works, such as a
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`translation, musical arrangement, dramatization, fictionalization, motion picture version,
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`sound recording, art reproduction, abridgment, condensation, or any other form in which
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`a work may be recast, transformed, or adapted.”7 17 U.S.C. § 101. Copyright
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`infringement is the violation of one of these exclusive rights of the copyright owner.
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`United Tel. Co., 855 F.2d at 607; see also Mulcahy, 386 F.3d at 852 (“One who violates
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`the copyright owner's right to create derivative works is an infringer.”). There is a
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`presumption of copyright validity attendant to a certificate of copyright registration.
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`United Tel. Co., 855 F.2d at 607.
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`“A claim for copyright infringement involves two elements: (1) ownership and
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`7 “A derivative work may itself be copyrighted if it has the requisite originality[ ,] [ but] ‘the c opyright is
`limited to the features that the derivative work adds to the original.’” Mulcahy, 386 F.3d at 852 (q uoting
`Pickett v. Prince, 207 F.3d 402, 405 (7th Cir. 2000)). Because the owner of the original copyright has the
`exclusive right to prepare derivative works, the creator of an original derivative work is only ent itled t o a
`copyright if she had permission to use the underlying copyrighted work. Id.; see 17 U.S.C. § 103(a).
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`8:20-cv-00109-JFB-CRZ Doc # 39 Filed: 11/13/20 Page 16 of 21 - Page ID # 307
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`validity of the copyright, and (2) potential violation of the copyright owner’s exclusive
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`rights by, for example, unauthorized reproduction and distribution of the copyrighted
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`work.” Pinkham v. Sara Lee Corp., 983 F.2d 842, 830 (8th Cir. 1992); see, e.g.,
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`Mulcahy, 386 F.3d at 852 (stating the elements are first, “ownership of a valid
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`copyright,” and second, “copying of original elements o