United States District Court, W.D. Washington, Seattle
LEOPONA, INC. D.B.A. AUDIOSOCKET, A Delaware corporation, et al., Plaintiffs,
UK CYCLING EVENTS, LTD., a private limited company registered in the United Kingdom, et al., Defendants.
ORDER DENYING DEFENDANTS' MOTION TO
RICARDO S. MARTINEZ CHIEF UNITED STATES DISTRICT JUDGE
matter comes before the Court on Defendants UK Cycling
Events, Ltd. (“UKCE's”) and Gareth
Roelofse's Motion to Dismiss under Rules 12(b)(2) and
12(b)(6). Dkt. #19. Plaintiff Leopona, Inc. (d/b/a
Audiosocket) and the artists suing for copyright infringement
(collectively “Plaintiffs”) oppose this Motion.
Dkt. #32. For the reasons stated below, the Court DENIES
Leopona, Inc., (herein “Audiosocket”) is a
Delaware corporation with offices in Seattle, Washington and
New Orleans, Louisiana. The remaining Plaintiffs are related
companies and music artists.
is a music licensing and technology company founded in 2009.
Audiosocket manages a catalog of over 64, 000 songs created
and produced by independent artists. The company's main
purpose is to find licensing opportunities for these songs.
Most licensing activity is focused on locating and securing
placements in films, television shows, ad campaigns, video
games and digital media. A small set of Audiosocket clients
license the music for streaming in in-store retail
environments. Audiosocket issues more than 1000 licenses per
revenue is driven by licensing fees, as it retains 50% of the
gross licensing revenue and 50% of all performance royalty
revenue, which is paid via performing rights societies such
as ASCAP, BMI and SESAC. Audiosocket's Standard Artist
Agreement allows the artists to retain ownership of both the
master sound recording and the publishing rights in their
music composition. Under its Artist Agreements, artists give
Audiosocket permission to promote their music to potential
licensees for commercial purposes.
uses technology to “watermark” its licensed
songs, encoding inaudible data each time it is uploaded or
downloaded. This allows rights holders/owners to track
copyrights and to ensure intellectual property is protected
and properly used. Through that technology, Audisocket
alleges that between May 18, 2012, and October 20, 2016, UK
Cycling employees Gareth Roelofse and Jon Gilbert executed 34
license agreements (collectively, the “License
Agreements”) for the music tracks specified in the
upper section of Exhibit A to the Complaint. See
Dkt. #1 at 15.
first 34 licenses were so-called “Personal
Licenses.” For two to four dollars, the Personal
Licenses granted Gilbert and Roelofse a perpetual right to
use certain music tracks licensed by Audiosocket
“solely for personal, non-commercial use.” These
Licenses allow individuals to create personal videos and post
them to the web while acknowledging and paying a nominal fee,
however the Personal Licenses further stated, “[f]or
the avoidance of doubt, Licensee may not use the Licensed
Tracks in (or on) any: . . . Advertisement or promotion of a
product, service or brand.” See Dkt. #33-1 at
The Personal Licenses also stated “[a]ny dispute
arising out of or relating to this License shall be commenced
in the federal or state courts located in King County,
Washington.” Id. at 3. The tracks subject to
the Personal Licenses are identified in the upper section of
Exhibit A. See Dkt. #1 at 15. In addition to the 34
Personal Licenses identified above, Mr. Roelofse also
purchased one Professional Photographer/Videographer License
(sometimes referred to as a “Wedding License”)
which for $35 allows professional photographers and
videographers to use the licensed music tracks as part of
professionally-produced videos and slideshows they then sell.
Consistent with that limited use, and the relatively minor
charge associated with the License, the Professional
Photographer/Videographer License Agreements expressly
prohibit the use of licensed tracks for advertising purposes.
These Agreements state: “[f]or the avoidance of doubt,
Licensee may not use the Licensed Track in (or on) any: . . .
Advertisement or promotion of a product, service, or brand
except [the Licensee's own videography business], ”
and also include the same forum selection clause as above.
Dkt. #33-1 at 5-7. The track subject to the Professional
Photographer/Videographer License is identified in the lower
section of Exhibit A. See id.
allege that, despite these License Agreement restrictions,
Defendants used the 35 licensed tracks 42 times as the
soundtracks for uploaded YouTube videos that promoted UKCE
bicycle tours. The videos also allegedly promoted other
products and brands. According to the Complaint, these
commercials remained on YouTube, actively advertising UK
Cycling Events services and the products of its partners to
tens of thousands of viewers, until December 2016, when
Audiosocket informed the Defendants of their breaches and
Legal Standard under Rule 12(b)(2)
defendant moves to dismiss for lack of personal jurisdiction,
the plaintiff bears the burden of demonstrating that the
court has jurisdiction over the defendant. Pebble Beach
Co. v. Caddy, 453 F.3d 1151, 1154, (9th Cir. 2006)
(citing Harris Rutsky & Co. Ins. Servs. v. Bell &
Clements Ltd., 328 F.3d 1122, 1128-29 (9th Cir. 2003)).
However, this demonstration requires that the plaintiff
“make only a prima facie showing of jurisdictional
facts to withstand the motion to dismiss.” Id.
(citing Doe v. Unocal, 248 F.3d 915, 922 (9th Cir.
2001) (internal citations omitted)). Moreover, for the
purpose of this demonstration, the court resolves all
disputed facts in favor of the plaintiff. Id.
general rule is that personal jurisdiction over a defendant
is proper if it is permitted by a long-arm statute and if the
exercise of that jurisdiction does not violate federal due
process. Id. Jurisdiction can be established by
general or specific jurisdiction. The Ninth Circuit relies on
a three-prong test for analyzing a claim of specific personal
jurisdiction: (1) The non-resident defendant must
purposefully direct his activities or consummate some
transaction with the forum or resident thereof; or perform
some act by which he purposefully avails himself of the
privilege of conducting activities in the forum, thereby
invoking the benefits and protections of its laws; (2) the
claim must be one which arises out of or relates to the
defendant's forum-related activities; and (3) the
exercise of jurisdiction must comport with fair play and
substantial justice, i.e. it must be reasonable.
Schwarzenegger v. Fred Martin Motor Co., 374 F.3d
797, 802, 2004 (citing Lake v. Lake, 817 F.2d 1416,
1421 (9th Cir. 1987)). The plaintiff bears the burden of
satisfying the first two prongs of the test. Id. If
the plaintiff fails to satisfy either of these prongs,
personal jurisdiction is not established in the forum state.
If the plaintiff succeeds in satisfying both of the first two
prongs, the burden then shifts to the defendant to
“present a compelling case” that the exercise of
jurisdiction would not be reasonable. Id. (citing
Burger King Corp. v. Rudzewicz, 471 U.S. 462,
476-78, 85 L.Ed.2d 528, 105 S.Ct. 2174 (1985)). “A
showing that a defendant purposefully availed himself of the
privilege of doing business in a forum state typically
consists of evidence of the defendant's actions in the
forum, such as executing or performing a contract
there.” Id. By taking such actions, a
defendant “purposefully avails itself of the privilege
of conducting activities within the forum State, thus
invoking the benefits and protections of its laws.”
Id. (citing Hanson v. Denckla, 357 U.S.
235, 253, 2 L.Ed.2d 1283, 78 S.Ct. 1228 (1958)). In return
for these “benefits and protections, a defendant must
-- as a quid pro quo - “submit to the burdens of
litigation in that forum.” Id. (citing,
inter alia, Burger King, 471 U.S. at 476).
The reasonableness determination requires the consideration
of several factors, including (1) the extent of the
defendant's purposeful interjection into the ...