Tenth Circuit Gives ‘Reborn Doll’ Company Another Shot at Copyright Suit Against Chinese Amazon Sellers

Bountiful Baby reborn doll

The U.S. Court of Appeals for the Tenth Circuit on Tuesday, October 15, ruled that a district court applied the wrong test for assessing personal jurisdiction in a case involving alleged counterfeit dolls being sold on Amazon.

The U.S. District Court for the District of Utah denied a motion for default judgment filed by Utah-based Bountiful Baby, a maker of kits for creating “reborn dolls,” against two Chinese companies— Adolly US (AUS) and Reborn Doll Gallery (RDG)—that it claimed were selling counterfeit versions of the dolls on Amazon.com. Bountiful Baby had first notified Amazon of the infringement, and Amazon promptly removed the listings under the Digital Millennium Copyright Act (DMCA), which provides a safe harbor for platforms if they expeditiously remove infringing material. AUS and RDG submitted counter notifications to Amazon to have the items relisted and in doing so consented to personal jurisdiction in “any judicial district in which Amazon may be found” and “agreed to accept service of process from” Bountiful Baby or its agent.

Bountiful Baby then filed suit for copyright infringement in the Utah district court and served process on the two Chinese companies. Neither company responded and Bountiful Baby then moved for default judgment, but the court in denying the motion said that Amazon is incorporated in Delaware and has its principal place of business in Washington, and thus Bountiful Baby had not shown that it “may be found” in Utah according to principles of constitutional due process. Bountiful Baby countered that Amazon could be found in Utah because it “maintains a physical presence or place of business there through multiple facilities.”

The district court vacated its constitutional due process rationale and granted Bountiful Baby’s motion for reconsideration in part, but ultimately denied the motion after analyzing the plain meaning of “found” according to Black’s Law Dictionary. That definition says in part that “it is necessary that [the corporation] be doing business in such state through an officer or agent or by statutory authority in such manner as to render it liable then to suit and to constructive or substituted service of process.”

On review, the Tenth Circuit rejected this reliance on the Black’s Law definition, explaining that it “defines ‘found’ for purposes of service of process on a defendant-corporation.” The opinion continued:

“As we explain, whether process may be served on a corporation in a copyright case requires a due process analysis that, in some cases alleging copyright infringement by a service provider’s subscriber, will prove impossible to perform.”

Instead, the Tenth Circuit relied on non-legal dictionaries in existence at the time of the DMCA’s enactment in 1998, including Webster’s American Family Dictionary, The Oxford American Desk Dictionary, The American Heritage Dictionary of the English Language, and others. Based on those definitions, the appellate court concluded that “a federal district court has personal jurisdiction over a subscriber whose address is outside the United States if it is possible to come upon or locate the service provider in the forum state.” As to how one comes upon or locates a service provider that is a corporation, the court said that “when a service provider is a corporation, it may be found in a federal judicial district for § 512(g)(3)(D) purposes if its agents or officers carry on the corporation’s business in the district.”

Having settled on this definition, the Tenth Circuit then held that Bountiful Baby had shown that Amazon’s agents or officers are present in Utah and conducting business there. The opinion cited to statements from the Utah Governor’s Office of Economic Opportunity and various news articles discussing Amazon’s extensive economic contributions and operations in the state as support for this. The court therefore reversed the district court’s judgment dismissing the action against the Chinese companies and remanded for further proceedings.