*The Honorable Denny Chin, who was at the time of argument a United States District Judge for the Southern District of New York sitting by designation, is now a member of this Court. 09-1739-cv Penguin Grp. (USA) Inc. v. Am. Buddha UNITED STATES COURT OF APPEALS 1
FOR THE SECOND CIRCUIT 2 August Term, 2010 3 (Argued: January 7, 2010 Question Certified: June 15, 2010 4 5 Certified Question Answered: March 24, 2011 6 Decided: May 12, 2011) 7 Docket No. 09-1739-cv 8

------------------------------------- 9 PENGUIN GROUP (USA) INC., 10 Plaintiff-Appellant , 11

- v - 12 AMERICAN BUDDHA, 13 Defendant-Appellee

. 14

------------------------------------- 15 Before: SACK, KATZMANN, and CHIN, *Circuit Judges

. 16 Appeal by the plaintiff from an order of the United 17 States District Court for the Southern District of New York 18 (Gerard E. Lynch, Judge ) dismissing this action for lack of 19 personal jurisdiction over the defendant. In answer to a 20 question we certified to the New York Court of Appeals, see 21 Penguin Grp. (USA) Inc. v. Am. Buddha , 609 F.3d 30, 42 (2d Cir. 22 2010), that court has concluded that "[i]n copyright infringement 23 cases involving the uploading of a copyrighted printed literary 242 work onto the Internet, . . . the situs of injury for purposes of 1 determining long-arm jurisdiction under [the relevant section of 2 New York's long-arm-jurisdiction statute is] . . . the location 3 of the copyright holder," Penguin Grp. (USA) Inc. v. Am. Buddha , 4 16 N.Y.3d 295, 301-02, --- N.E.2d ---, ---, --- N.Y.S.2d ---, --- 5 (2011). In light of this response by the Court of Appeals, the 6 judgment of the district court is now: 7 Vacated and Remanded. 8 RICHARD DANNAY, Cowan, Liebowitz & 9 Latman, P.C. (Thomas Kjellberg, of 10 counsel), New York, N.Y., forPlaintiff11 Appellant

. 12 CHARLES CARREON, Online Media Law, PLLC, 13 Tucson, Ariz., forDefendant-Appellee

. 14

PER CURIAM : 15 This appeal, which returns to us after the New York 16 Court of Appeals responded to a question we certified to that 17 Court, concerns the limits of New York's "long-arm" jurisdiction 18 over out-of-state defendants in copyright infringement actions. 19 We assume the readers' familiarity with the facts and procedural 20 history as set forth in our previous opinion in this case. See 21 Penguin Grp. (USA) Inc. v. Am. Buddha , 609 F.3d 30, 32-34 (2d 22 Cir. 2010) ("Am. Buddha II "). We rehearse them here only insofar 23 as we think necessary to explain our final resolution of this 24 appeal. 25 The defendant American Buddha is an Oregon not-for26 profit corporation with its principal place of business in 27 Arizona that maintains a website known as the Ralph Nader 282The Ralph Nader Library is not affiliated with well known consumer advocate Ralph Nader. SeePenguin Grp. (USA) Inc. v. Am. Buddha , 609 F.3d 30, 33 (2d Cir. 2010).

3Penguin alleges that American Buddha has posted the following four books in their entirety on www.naderlibrary.com, thereby infringing Penguin's copyrights in the printed works: Upton Sinclair, Oil! ; Sinclair Lewis, It Can't Happen Here ; Apuleius, The Golden Ass(E.J. Kenney trans.); and Lucretius, On the Nature of the Universe(R.E. Latham trans.). Penguin Grp. (USA) Inc. v. Am. Buddha , No. 09-cv-528, 2009 WL 1069158, at *1, 2009 U.S. Dist. LEXIS 34032, at *2 (S.D.N.Y. Apr. 21, 2009).

4Subject matter jurisdiction was premised on the federal courts' "original and exclusive" jurisdiction over actions alleging copyright infringement pursuant to 17 U.S.C. § 501. Compl. ¶ 4; see28 U.S.C. § 1338(a). 3 Library. 2The website "provides access to classical literature 1 and other works . . . , including [four] works published in print 2 format by Plaintiff-Appellant Penguin Group (USA) Inc. 3 [("Penguin")]." 3Am. Buddha II , 609 F.3d at 33 (internal 4 quotation marks omitted). Having learned of the existence of 5 American Buddha's website and its contents, Penguin filed suit 6 against American Buddha in the United States District Court for 7 the Southern District of New York, alleging that American 8 Buddha's posting of the four Penguin books on the Internet 9 violated Penguin's copyrights in works that it had published. 4 10 American Buddha moved to dismiss the complaint pursuant to Rule 11 12(b)(2) of the Federal Rules of Civil Procedure, "contending 12 that it has done nothing that would make it amenable to suit in 13 New York." Penguin Grp. (USA) Inc. v. Am. Buddha , No. 09-cv-528, 14 2009 WL 1069158, at *1, 2009 U.S. Dist. LEXIS 34032, at *1 15 (S.D.N.Y. Apr. 21, 2009) ("Am. Buddha I "). The district court 164 agreed, ruling, as we later characterized it, that the "situs of 1 the injury" was "where the book[s in which Penguin holds the 2 copyrights were] electronically copied -- presumably in Arizona 3 or Oregon, where American Buddha and its computer servers were 4 located -- and not New York, where Penguin was headquartered." 5 Am. Buddha II , 609 F.3d at 32; see alsoAm. Buddha I , 2009 WL 6 1069158, at *4, 2009 U.S. Dist. LEXIS 34032, at *13. This appeal 7 followed. 8 Concluding that resolution of the issues raised on 9 appeal "require[d] analysis of state law and policy 10 considerations that this Court is ill-suited to make," Am. Buddha 11

II , 609 F.3d at 32, we certified a question to the New York Court 12 of Appeals, which that Court has now answered. 13 The district court's dismissal of Penguin's complaint 14 rested on its interpretation of New York's long-arm statute, N.Y. 15 C.P.L.R. 302(a)(3)(ii). It provides, in pertinent part: 16 [A] court may exercise personal jurisdiction 17 over any non-domiciliary . . . who . . . 18 commits a tortious act without the state 19 causing injury to person or property within 20 the state, . . . if he . . . expects or 21 should reasonably expect the act to have 22 consequences in the state and derives 23 substantial revenue from interstate or 24 international commerce . . . . 25 N.Y. C.P.L.R. 302(a)(3)(ii). To establish jurisdiction under 26 this provision, a plaintiff must demonstrate that: 27 (1) the defendant's tortious act was 28 committed outside New York, (2) the cause of 29 action arose from that act, (3) the tortious 30 act caused an injury to a person or property 31 in New York, (4) the defendant expected or 325 should reasonably have expected that his or 1 her action would have consequences in New 2 York, and (5) the defendant derives 3 substantial revenue from interstate or 4 international commerce. 5 Am. Buddha II , 609 F.3d at 35 (citing LaMarca v. Pak-Mor Mfg. 6
Co. , 95 N.Y.2d 210, 214, 735 N.E.2d 883, 886, 713 N.Y.S.2d 304, 7 307 (2000)). 8 In this case, the applicability vel nonof the long-arm 9 statute turns on the third requirement: the situs of Penguin's 10 injury. For the district court to find that the long-arm statute 11 conferred jurisdiction on courts in New York, Penguin was 12 required to show that it suffered injury "within the state." 13 After examining two competing lines of New York cases, the 14 district court reasoned that "[b]ecause Penguin pleaded 15 infringement only by American Buddha, and not by any individual 16 who downloaded material from American Buddha's site, . . . 17 business was lost through the copying of the copyrighted works by 18 American Buddha and not through their placement on the Internet." 19 Id.at 37 (characterizing the district court's analysis in Am. 20 Buddha I ). The district court therefore concluded that Penguin's 21 business was lost -- and its injury suffered -- "where the books 22 were uploaded -- Oregon or Arizona -- not where they were 23 downloaded and used, which could have been anywhere that the 24 Internet is available, including New York." Id. (same). 25 On appeal to this Court, we decided that resolution of 26 the appeal "require[d] a determination of how the New York State 27 Legislature intended to weigh the breadth of protection to New 285The district court does not have statutory authority to ask the New York Court of Appeals for its views on unsettled and important issues of New York law. We do. SeeN.Y. Comp. Codes R. & Regs. tit. 22, § 500.27(a). 6 Yorkers whose copyrights have allegedly been infringed against 1 the burden on non-resident alleged infringers whose connection to 2 New York may be remote and who may reasonably have failed to 3 foresee that their actions would have consequences in New York." 4 Id.at 32; see alsoid.at 37-41 (reviewing the legislative 5 history of the relevant long-arm provisions and New York cases 6 interpreting them). 7 We therefore certified the following question to the 8 New York Court of Appeals: 5"In copyright infringement cases, is 9 the situs of injury for purposes of determining long-arm 10 jurisdiction under N.Y. C.P.L.R. § 302(a)(3)(ii) the location of 11 the infringing action or the residence or location of the 12 principal place of business of the copyright holder?" Id. at 32. 13 On March 24, 2011, the Court of Appeals answered a 14 "narrow[ed] and reformulate[d]" version of our question. Penguin 15 Grp. (USA) Inc. v. Am. Buddha , 16 N.Y.3d 295, 301, --- N.E.2d --- 16 , ---, --- N.Y.S.2d ---, --- (2011) ("Am. Buddha III "). The 17 Court rephrased our question as follows: "In copyright 18 infringement cases involving the uploading of a copyrighted 19 printed literary work onto the Internet , is the situs of injury 20 for purposes of determining long-arm jurisdiction under N.Y. 21 C.P.L.R. § 302(a)(3)(ii) the location of the infringing action or 22 the residence or location of the principal place of business of 236The Court of Appeals emphasized that it was not "necessary [for it] to address whether a New York copyright holder sustains an in-state injury pursuant to CPLR 302(a)(3)(ii) in a copyright infringement case that does not allege digital piracy and, therefore, express[ed] no opinion on that question." Am. Buddha III , 16 N.Y.3d at 307 n.5, --- N.E.2d at --- n.5, --- N.Y.S.2d at --- n.5. 7 the copyright holder?" Id. at 301-02, --- N.E.2d at ---, --- 1 N.Y.S.2d at --- (emphasis added). 6The Court concluded that "a 2 New York copyright owner alleging infringement sustains an in3 state injury pursuant to CPLR 302(a)(3)(ii) when its printed 4 literary work is uploaded without permission onto the Internet 5 for public access." Id. at 304, --- N.E.2d at ---, --- N.Y.S.2d 6
at ---. 7 The New York Court of Appeals observed that "the 8 Internet itself plays an important role in the jurisdictional 9 analysis in the specific context of this case." Id. at 304, --- 10 N.E.2d at ---, --- N.Y.S.2d at ---. "[T]he alleged injury in 11 this case involves online infringement that is dispersed 12 throughout the country and perhaps the world." Id. at 305, --- 13 N.E.2d at ---, --- N.Y.S.2d at ---. The Court therefore 14 concluded that "it is illogical to extend" the traditional tort 15 approach that "equate[s] a plaintiff's injury with the place 16 where its business is lost or threatened" to the context of 17 "online copyright infringement cases where the place of uploading 18 is inconsequential and it is difficult, if not impossible, to 19 correlate lost sales to a particular geographic area." Id. at 20 305, --- N.E.2d at ---, --- N.Y.S.2d at ---. 218 The Court also identified the right of a copyright 1 holder "'to exclude others from using his property'" as a 2 "critical factor that tips the balance in favor of identifying 3 New York as the situs of injury." Id. at 305, --- N.E.2d at ---, 4 --- N.Y.S.2d at --- (quoting eBay Inc. v. MercExchange, L.L.C. , 5 547 U.S. 388, 392 (2006)). In light of this right and the 6 "undisputed" fact that "American Buddha's Web sites are 7 accessible by any New Yorker with an Internet connection," the 8 Court viewed the "absence of any evidence of the actual 9 downloading of Penguin's four works by users in New York" as "not 10 fatal to a finding that the alleged injury occurred in New York." 11 Id.at 306, --- N.E.2d at ---, --- N.Y.S.2d at ---. 12 The Court of Appeals rejected American Buddha's 13 assertion that its decision would "open a Pandora's box allowing 14 any nondomiciliary accused of digital copyright infringement to 15 be haled into a New York court when the plaintiff is a New York 16 copyright owner of a printed literary work." Id. at 307, --- 17 N.E.2d at ---, --- N.Y.S.2d at ---. The Court was satisfied that 18 the long-arm statute's "built-in safeguards against such 19 exposure," together with the requirements of the United States 20 Constitution's Due Process Clause, would guard against such 21 abuse. Id. at 307, --- N.E.2d at ---, --- N.Y.S.2d at ---. 22 When this appeal was last before us, we indicated that 23 "were we eventually to agree with Penguin, contrary to the 24 district court's decision, that the situs of injury was indeed 25 New York, the proper course would be to remand to the district 269 court to consider the remaining four factors for personal 1 jurisdiction under the long-arm statute." Am. Buddha II , 609 2 F.3d at 41. The Court of Appeals' decision now compels us to 3 "agree with Penguin" and to conclude, for the purposes of the 4 personal jurisdiction analysis pursuant to New York's long-arm 5 statute, that the situs of Penguin's alleged injury was New York. 6 As we observed in American Buddha II , the district 7 court's opinion and order dismissing Penguin's complaint 8 addressed only the situs-of-injury issue. Seeid. ; Am. Buddha I , 9 2009 WL 1069158, at *4, 2009 U.S. Dist. LEXIS 34032, at *13 ("As 10 this issue is dispositive, it is not necessary to explore whether 11 plaintiff has met its burden on the other elements necessary to 12 establish jurisdiction under Rule 302(a)(3)(ii), or whether the 13 exercise of jurisdiction would comport with due process."). We 14 therefore vacate the judgment of the district court and remand 15 this case to that court for its consideration in the first 16 instance of whether Penguin has established the four remaining 17 jurisdictional requisites, and the extent to which the assertion 18 of personal jurisdiction over American Buddha would be consistent 19 with the requirements of Due Process. 20 For the foregoing reasons, the judgment dismissing the 21 plaintiff's complaint is vacated and the case is remanded to the 22 district court for further proceedings consistent with this 23 opinion and with the Court of Appeals' response to our certified 24 question. 25