Updates on Transborder Copyright Enforcement Over “Grandma Got Run Over by a Reindeer”–Shropshire v. Canning

By Eric Goldman

Shropshire v. Canning, 2012 WL 13658 (N.D.Cal. Jan. 4, 2012). Prior blog post.

This dispute involves complicated facts, so here’s my understanding of what’s happening:

The lawsuit involves the musical composition “Grandma Got Run Over by a Reindeer.” I won’t give the song a dignity of a link. The song is co-owned by a group that includes Shropshire and his ex-wife Patsy. A Canadian group, the Irish Rovers, covered the song. I can’t tell if that cover was properly licensed. Canning, a Canadian, uploaded the Irish Rover’s cover to YouTube and synchronized it with Christmas-themed pictures, such as reindeers. I infer that Canning uploaded the cover without express consent from the Irish Rovers. Shropshire eventually sent a takedown notice to YouTube, and Canning submitted a counter-notice. Shropshire then sued Canning for copyright infringement and a 512(f) claim for an impermissible putback notice. Canning subsequently got authorization from co-owner/ex-wife Patsy for his video.

In the first ruling last January, the court rejected (with leave to amend) Shropshire’s synchronization claim, saying that Canning’s synchronization took place in Canada, not the US, and therefore wasn’t covered by US copyright law. The court also rejected (with leave to amend) the 512(f) claim for lack of a claimed misrepresentation. Finally, the court required Shropshire to bring in Patsy as a party, which Shropshire did.

In August, the court partially granted and denied a motion to dismiss the second amended complaint. The court held that “extraterritoriality [is] an element of a claim for copyright infringement rather than an issue of subject matter jurisdiction,” and then that “the alleged act of direct copyright infringement – uploading a video from Canada to YouTube’s servers in California for display within the United States – constitutes an act of infringement that is not “wholly extraterritorial” to the United States.” Copyright’s strict liability made it irrelevant if Canning tried to upload to youtube.ca and had no idea that this would result in files being stored on US servers. [In my opinion, this is a harsh result as none of us have any idea about the geographic situs of servers in the cloud, nor do we care]. The court also partially upheld Shropshire’s 512(f) claims from a 12(b)(6) dismissal motion.

That brings us to the most recent ruling, which is largely procedural. Shropshire had named ex-wife Patsy as a party, but they worked things out and settled, which led to Patsy being dismissed. Canning reiterated that Patsy was still an indispensable party to the litigation, but the court held that Shropshire satisfied the prior order by bringing Patsy in and then working out a deal with her. To me, the more interesting development is that the case started with no lawyers on either side, but now both sides have lawyered up in a big way–Shropshire’s team lists 4 lawyers from DLA Piper (possibly the world’s largest law firm), while Canning has 3 lawyers from Mark Lanier’s law firm (not Lanier himself). Seriously, guys? We’re talking about a comparatively obscure YouTube video, not Obamacare!

Putting aside the many quirks of this case (including the fact that Canning posted a cover recording and the implicit proxy war between ex-spouses), I think the case is interesting because it demonstrates that US copyright owners can bring–and are bringing–copyright enforcement actions in US courts against foreign alleged infringers. This is the kind of fact that seems highly relevant to SOPA/PROTECT-IP…not that the advocates would actually acknowledge what’s taking place in court if it would undercut the case for the legislation–even if the court system today will provide them with their desired solutions without any damaging legislative fixes.

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