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Introduction

Epic Games, Inc. v. Mendes (N.D.Cal. Jan. 29, 2018, No. 17-cv-06223-LB) 2018 U.S.Dist.LEXIS 14954, at *3-4.) laid out the general process of DMCA takedown and counter-notice process and consent to jurisdiction and potentially email service:

"The Digital Millennium Copyright Act ("DMCA") allows copyright holders to request network service providers to take down material that infringes their copyrights. See 17 U.S.C. § 512(c)(1)(C), (c)(3). On or about October 17, 2017, Epic Games submitted a DMCA takedown notice to YouTube for Mr. Rak's video. YouTube took the video down.  But the DMCA also allows a subscriber to the service provider whose material has been taken down to submit a counter-notification requesting that the service provider replace the removed material. See 17 U.S.C. § 512(g)(2), (3). On or about October 23, 2017, Mr. Rak submitted a counter-notification to YouTube for his video.  The DMCA requires individuals submitting counter-notices to include their "name, address, and telephone number, and a statement . . . that [they] will accept service of process from the person who provided notification under subsection (c)(1)(C) or an agent of such person." 17 U.S.C. § 512(g)(3)(D). In accordance with Section 512(g)(3)(D), Mr. Rak's counter-notice listed his address in Russia, listed his email address as [email protected], and included a statement that "I . . . will accept service of process from the claimant."

Where a defendant has submitted a DMCA counter-notice that lists his or her email address and that expressly states that he or she "will accept service of process," courts have allowed plaintiffs to serve the summons and complaint on that email and have held that such service comports with due process. See Ultra Records, 2017 U.S. Dist. LEXIS 58715, 2017 WL 1753485, at *1-2 (approving service by email on defendant who, among other things, filed DMCA counter-notice that stated that "I . . . will accept service of process from the claimant") (ellipsis in original); Xcentric Ventures, 2011 U.S. Dist. LEXIS 81698, 2011 WL 3156966, at *1-2. The court therefore in its discretion allows Epic Games to similarly serve Mr. Rak by email at [email protected] (the email address in his DMCA counter-notice) and at [email protected].

Counter notification process

(3)Contents of counter notification.—To be effective under this subsection, a counter notification must be a written communication provided to the service provider's designated agent that includes substantially the following:

Primer on personal jurisdiction

Consenting to Jurisdiction

When a person challenges a DMCA takedown request, the content at issue comes down, UNLESS, the party to whom the DMCA takedown is directed files a "COUNTER-NOTICE."  In this event, the copyrighted content goes back up, UNLESS, the complaining party files a federal court lawsuit (ex. for copyright infringement) within 10 days of the counter-notification being filed.  In this event, the content stays down until the dispute is resolved.  In this process, there is a consent to jurisdiction that gets filed with the counter-notice.  Here is one case that discusses how this works.

Plaintiff must establish personal jurisdiction

Click here to watch our video to learn more about burden of proof in civil cases.

See Burri Law PA v. Skurla, 35 F.4th 1207, 1213 (9th Cir. 2022).

"Plaintiff bears the burden of “establish[ing] the court's personal jurisdiction over a defendant.” Doe v. Unocal Corp., 248 F.3d 915, 922 (9th Cir. 2001). “For a court to have specific personal jurisdiction in an intentional tort or copyright case, “the defendant allegedly must have:

(1) committed an intentional act,

(2) expressly aimed at the forum state,

(3) causing harm that the defendant knows is likely to be suffered in the forum state.”

See Mavrix Photo, Inc. v. Brand Techs., Inc., 647 F.3d 1218, 1228 (9th Cir. 2011). 

Further, when there are multiple defendants, “[t]he jurisdictional inquiry must decouple defendants, considering whether each individual defendant has had sufficient ‘minimum contacts' with the forum state to justify an exercise of jurisdiction.” 

Under the Copyright Act, 17 U.S.C. § 512(g)(3)(D), for a counter notification to be effective, it must include, among other things,

“[t]he subscriber's name, address, and telephone number, and a statement that the subscriber consents to the jurisdiction of Federal District Court for the judicial district in which the address is located, or if the subscriber's address is outside of the United States, for any judicial district in which the service provider may be found, and that the United States District Court Northern District of California subscriber will accept service of process from the person who provided notification under subsection (c)(1)(C) or an agent of such person.”

Plaintiff has submitted counter notices for four Defendants: These counter notices state: “I consent to the jurisdiction of the Federal District Court for the district in which my address is located, or if my address is outside of the United States, the judicial district in which YouTube is located, and will accept service of process from the claimant.” These counter notices are sufficient to meet Plaintiff's threshold burden to establish the Court's personal jurisdiction

Merely uploading a video does not establish personal jurisdiction

In one key case from the 9th circuit in California - Werner v. Dowlatsingh (9th Cir. 2020) 818 F.App'x 671, 672 the court held:

Jeffrey Werner and Incredible Features, Inc., (collectively "Werner") allege Landon Dowlatsingh infringed their copyrights by displaying their protected photographs in videos Dowlatsingh uploaded to YouTube. Dowlatsingh lives and works in Canada and uploaded the allegedly infringing videos from Toronto to YouTube's Canadian platform. Werner filed this copyright infringement suit in the Central District of California, and two days later Dowlatsingh was served with the complaint and summons while he was attending a social media convention in Orlando, Florida. Dowlatsingh moved to dismiss the case for a lack of personal jurisdiction. Werner opposed but argued in the alternative that if the Central District of California lacked personal jurisdiction the case should be transferred to the Middle District of Florida. The district court held it lacked personal jurisdiction over Dowlatsingh, declined to transfer the case, and dismissed the complaint.

Werner appealed, and we have jurisdiction under 28 U.S.C. § 1291. We review the dismissal for a lack of personal jurisdiction de novo, Easter v. Am. W. Fin., 381 F.3d 948, 956 (9th Cir. 2004), and the denial of the motion to transfer venue for an abuse of discretion, Decker Coal Co. v. Commonwealth Edison Co., 805 F.2d 834, 842 (9th Cir. 1986). We affirm.

The Court noted:

"Dowlatsingh's "suit related conduct"—allegedly displaying copyright protected photos via videos uploaded to YouTube from Toronto—did not "create a substantial connection with [California]," and Werner's claims otherwise are unavailing. Walden v. Fiore, 571 U.S. 277, 284, 134 S. Ct. 1115, 188 L. Ed. 2d 12 (2014); see also Axiom Foods, Inc. v. Acerchem Int'l, Inc., 874 F.3d 1064, 1070 (9th Cir. 2017). Neither Dowlatsingh's trips to California to attend VidCon, nor his sponsorship agreement with a California watch-making company, are related to the present suit and thus do not support an exercise of specific personal jurisdiction. Additionally, the visible watermark on the uploaded photos established only Werner's "contacts with the defendant and forum" and did not show that Dowlatsingh's "conduct connect[ed] him to the forum in a meaningful way." 

Contact a YouTube Social Media Disputes Law Firm

Vondran Legal® can help with a wide variety of internet and social legal disputes, from YouTube copyright takedowns to counter-notification letters and federal court infringement lawsuits.  We can also assist with fair use opinion letters that help videographers, documentary film makers and others avoid costly copyright infringement lawsuits.  Account takedowns is also an area that we can assist in.  Call us at (877) 276-5084 to speak with an internet attorney or leave us a detailed message through our contact form.