The Trade Secrets: News Flash! Jurisdiction in Copyright Cases


Intellectual Property Attorney Timothy B. McCormack discusses how the landmark case Washington Shoe Vs. A-Z Sporting Goods helped to define jurisdiction in intellectual property cases.


For years intellectual property owners have been fighting a losing battle against unauthorized use both home and abroad. The recent decision from the Ninth Circuit Court of Appeals, Washington Shoe v. A-Z Sporting Goods changes the landscape of jurisdiction to be more favorable to copyright plaintiffs. This is probably the most important jurisdictional decision in 50 to 100 years. Copyright holders can sue infringers in their home state with some certainty, instead of chasing them all over the nation.

Common sense tell us if you own a copyright or a patent, and you tell somebody to stop. And they don’t. You should be able to sue them. I mean, this is America, right? Well, that’s true to a point. But practically we have to ask this question: Where will we sue this infringer? Seattle? Portland? New York? Historically, the answer to that question was based on a case called International Shoe v. State of Washington.

Seventy years ago few homes had television sets. A computer took up 1,800 square feet of floor space. A cell phone? Only in a science fiction movie.

Now intellectual property did exist in tangible items like books, paintings, physical photographs. But it was different than it is today. Where images have gone digital, transmitted world-wide across the internet. Some commentators have criticized the International Shoe decision because it does not take into consideration the technology and business needs of the 21st Century. After 70 years of litigating what that all meant, now jurisdiction can exist simply. If you’ve got a willful infringer from Arkansas taking your intellectual property, stealing it. With full knowledge that they’re causing damage to you in your home state, you can now sue them where your business is located. A fundamental change.

The Washington Shoe decision actually creates certainty for rights holders and defendants. Rather than go through the antique analysis from 70 years ago, infringers and rights holders alike can determine very simply where an infringement suit is going to happen.

My take, companies like Microsoft, Boeing, Adobe and Getty Images now have the tools to adequately protect their intellectual property on their home turf, rather than that of an infringer. Now that really is in accordance with the “notions” of fair play and substantial justice.

In the next episode of the Trade Secrets we will look at the details of these important and historic decisions to give context to this new trade secret of intellectual property.