IP Law Daily, COPYRIGHT—M.D. Tenn.: Dispute over photo of Garth Brooks transferred to Texas due to lack of personal jurisdiction, (Jan 23, 2023)

By Anne H. Gibson, J.D., LL.M.

Sending cease and desist letters was not enough to show purposeful availment in declaratory judgment case by record company against photographer.

A declaratory judgment suit regarding the copyright to a photo of Garth Brooks will be transferred to Texas due to lack of personal jurisdiction, the federal district court in Nashville, Tennessee has ruled. The suit was brought by three companies that were involved in producing a book about country music artist Garth Brooks. A photographer, a resident of Texas, claimed that he owned the copyright to a photo used in the book and related DVD, and sent cease and desist letters to the companies. The companies responded by filing a suit seeking declaratory judgment, asserting that they held the copyright to the relevant photo. The photographer filed a motion to dismiss for lack of personal jurisdiction and requested to transfer the case to the district in Texas in which he lives. The court granted the motion to dismiss and the transfer ( Pearl Records, Inc. v. Conner, January 20, 2023, Crenshaw, W.).

Background. Pearl Records, Inc. claims to own the copyright to a certain photograph of Garth Brooks. This photograph was provided by Pearl Records to Melcher Media, Inc., along with other materials, to produce “Garth Brooks the Anthology Part I, The First Five Years” (“the Anthology”), a 240-page memoir about Brooks’ career. A promotional DVD for the Anthology, produced by Horse of Troy Productions Inc., also included the photo. The Anthology was registered with the U.S. Copyright Office on January 25, 2018. Pearl Records keeps a physical copy of the photo in its vault and alleges that a family member of Brooks originally took the photo.

Craig Conner, a photographer resident in Texas, asserts that he took the photo in 1991. He registered the photo with the U.S. Copyright Office on July 19, 2021. Conner sent cease and desist letters to the companies involved in November 2021 and January 2022. The companies eventually filed for declaratory judgment, seeking a declaration that Pearl Records is the copyright holder of the photo and that the companies did not infringe on any rights of Conner’s. Conner filed a motion to dismiss, alleging, among other things, that the court did not have personal jurisdiction over him, and requesting that the case be transferred to the Eastern District of Texas, where he is a resident.

Personal jurisdiction. The court stated that the plaintiff has the burden of setting forth sufficient facts to show that the court has jurisdiction over the defendant. Viewing the pleadings in the light most favorable to the companies, the court looked to whether Conner might be subject to general or specific personal jurisdiction. Because Conner did not have “continuous and systematic contact” with Tennessee, general jurisdiction was not appropriate, the court held.

Specific jurisdiction. Specific jurisdiction, on the other hand, would exist if the three-part test from Southern Machine Co. v. Mohasco Industries, Inc., 401 F.2d 374 (6th Cir. 1968) were met: (1) the defendant purposefully availed him- or herself of the privilege of acting in the forum state, (2) the cause of action arises from the defendant’s actions in the forum state, and (3) the defendant had a substantial connection with the forum state.

The companies argued that Conner had shown purposeful availment in Tennessee in two ways: (1) by virtue of a copy of the photo that he claimed to be the owner of being held in Pearl Records’ vault in Nashville, and (2) by sending cease-and-desist letters, as well as other communications, to the companies in Tennessee.

The court first looked at the issue of the communications sent into the state. It noted that only four separate communications were at issue. The court noted that the “inquiry is ultimately guided by the ‘quality rather than the quantity of the contacts.’” One of these communications was a phone call that was actually made by the companies’ counsel to Conner’s counsel. This, the court held, would not count against Conner in the analysis. Similarly, one of the emails listed was a response from Conner’s counsel to an email from the companies’ counsel.

The other two contacts were cease and desist letters. The court noted that the Sixth Circuit has previously stated that “the threat of litigation can be a factor supporting purposeful availment.” However, “as a general rule ‘cease-and-desist letters alone do not suffice to create personal jurisdiction….’” The court thus investigated whether Conner was alleged to have taken any additional actions, beyond just sending the letters, that would make personal jurisdiction appropriate. It did not find any.

The court further stated that the location of the copy of the photo was immaterial. “Conner did not claim conversion as to the physical photograph, but rather he claims authorship and ownership over, and infringement upon, the underlying intangible copyright.” Thus, the presence of the photo in Pearl Records’ vault did not impact the court’s jurisdiction over Conner.

The court found that Conner’s contacts with Tennessee were insufficient to meet the purposeful availment test, and thus it did not need to reach the other elements of the specific jurisdiction test. As the court put it, “to paraphrase one famed country musician, the Court finds that all the nexus is in Texas, that’s why the Companies can’t hang their hat in Tennessee.”

Transfer. Finally, the court determined that it was “in the interest of justice, efficiency, and comity,” to transfer the case to the Beaumont Division of the Eastern District of Texas, where Conner is a resident, in its discretion under the authority of 28 U.S.C. 1406(a).

The motion to dismiss was thus granted and the case was transferred to the Eastern District of Texas for further proceedings.

The Case is No. 3:22-cv-00096.

Attorneys: Mariam N. Stockton (Neal & Harwell, PLC) for Pearl Records, Inc. Dana Lejune (Dana Lejune Attorney At Law) for Craig Conner.

Companies: Pearl Records, Inc.

Cases: Copyright TennesseeNews