Canadian-Uploaded YouTube Video Doesn’t Infringe in US–Shropshire v. Canning
By Eric Goldman
Shropshire v. Canning, 2011 WL 90136 (N.D. Cal. Jan. 11, 2011)
This lawsuit relates to the Christmas novelty song, “Grandma Got Run Over By A Reindeer,” a song I listened to far too many times while preparing this blog post. I won’t dignify the song with a link. Just know that it was initially released in 1979 (not known as a good year, or era, in music) and co-performed by a guy named Elmo Shropshire. Need I say more?
Canadian resident Canning allegedly posted the YouTube video at issue, which paired reindeer pictures with a cover of the “Grandma” song by a Canadian group “The Irish Rovers.” Shropshire retains an equity interest in the song. Canning received a takedown request and ignored it. Shropshire then filed a takedown request with YouTube, which complied but reversed itself when Canning filed a counter-notice claiming fair use. Shropshire then sent multiple emails to YouTube protesting the reinstatement. Finally, he sued Canning and YouTube, but later dropped YouTube voluntarily. Thus, the court deals with two claims against Canning–a claim for synchronizing the song with the reindeer pictures, and a claim for a false DMCA counternotification. Both parties have mostly been proceeding pro se, which explains some of the messiness. The court dismisses both claims but gives Shropshire the chance to amend.
Regarding the synchronization claim, the court says that the synchronization took place entirely in Canada and therefore outside the reach of US copyright law. Shropshire argued that the upload took place in the US, but he didn’t assert that in his complaint. The court continues:
There are no allegations that Plaintiff marketed or advertised the video in the U.S., distributed, sold or exported the video to U.S. customers, or received any profit from posting the video on YouTube; in fact, Plaintiff did not sell the video to anyone.
This could be easy to fix, so Canning’s victory may be temporary. Shropshire may simply need to amend his complaint to allege that the upload and subsequent downloads are infringing and occurred in the US. The court makes its expectation clear: “Any amended complaint must identify a specific act of infringement that occurred entirely within the United States.”
With respect to Shropshire’s suit over Canning’s counternotification, this is a very rare 17 USC 512(f) lawsuit over a counternotification from the uploading party–as opposed to a 512(f) lawsuit against the copyright owner for sending a bogus takedown notice (which is also pretty rare). The court could not find in the complaint where Shropshire alleged Canning misrepresented in the counter-notice. The court lets Shropshire try again, saying “Plaintiff must identify a specific misrepresentation and explain how that misrepresentation caused him injury.”
Further, the court requires Shropshire to bring in at least one other plaintiff. Shropshire had designated a publishing company as “exclusive copyright administrator” for the song, making that party a necessary litigant. Without this party, “Defendant would be subject to substantial risk of incurring double, multiple, or otherwise inconsistent obligations.” I wonder how often the joinder issue will arise in future 512(f) litigation over counternotifications. One way of reading this opinion is that all co-owners and exclusive licensees would need to be a part of any 512(f) claim over counternotifications. If that’s the case, 512(f) lawsuits over counternotifications are likely to remain rare. [UPDATE: A reader points out that the court’s discussion here is ambiguous. Another way to read the opinion is that joinder is required for both claims, not just the 512(f) claim, which would make the court’s joinder requirement even more interesting.]