Opinion
Civil Action 21 Civ. 11209 (JLR) (SLC)
01-19-2023
LEONG FRANCISCO PAULO, Plaintiff, v. AGENCE FRANCE-PRESSE, GETTY IMAGES (US), INC., GETTY IMAGES, INC., JOHN DOES 1-100, AND XYZ CORPORATIONS 1-100, Defendants.
REPORT AND RECOMMENDATION
Sarah L. Cave, United States Magistrate Judge
TO THE HONORABLE JENNIFER L. ROCHON, United States District Judge:
I. INTRODUCTION
Plaintiff Leong Francisco Paulo (“Leong”), a Portuguese photojournalist, brings this action against Agence France-Presse (“AFP”), a French news agency, and Getty Images, Inc., a Delaware corporation, and Getty Images (US), Inc. (“Getty US”), a New York corporation (together, the “Getty Defendants,” with AFP, “Defendants”), alleging that Defendants' use of thousands of his photographs constituted copyright infringement and violations of copyright management information (“CMI”) under the Copyright Act, 17 U.S.C §§ 501, 1202, et seq. (the “Act”). (ECF No. 52 (the “FAC”) ¶¶ 1, 6-8, 232-60). Before the Court is Defendants' motion to dismiss the FAC (1) pursuant to the doctrine of forum non conveniens, and (2) with respect to AFP only, for lack of personal jurisdiction. (ECF No. 53 (the “Motion”)). For the reasons set forth below, I respectfully recommend that the Motion be GRANTED and the action be conditionally dismissed pursuant to the doctrine of forum non conveniens. In the alternative, I respectfully recommend that the claims against AFP be dismissed for lack of personal jurisdiction.
II. BACKGROUND
A. Factual Background
The following facts are taken from the FAC, the documents attached to it, and the documents it incorporates by reference, see Kleinman v. Elan Corp., PLC, 706 F.3d 145, 152 (2d Cir. 2013), as well as public records of which the Court may take judicial notice pursuant to Federal Rule of Evidence 201(b)(2). See Kramer v. Time Warner, Inc., 937 F.2d 767, 774 (2d Cir. 1991) (“[C]ourts routinely take judicial notice of documents filed in other courts, . . . not for the truth of the matters asserted in the other litigation, but rather to establish the fact of such litigation and related filings.”); Johnson v. City of New York, No. 15 Civ. 8195 (GHW), 2017 WL 2312924, at *3 n.4 (S.D.N.Y. May 26, 2017) (on motion to dismiss, taking judicial notice of court order in another proceeding). For purposes of the Motion, the Court accepts Leong's allegations as true and construes them in the light most favorable to him. See Harris v. Mills, 572 F.3d 66, 71 (2d Cir. 2009).
Unless otherwise indicated, all internal citations and quotation marks are omitted from case citations in this Report and Recommendation.
Additional facts relevant to the personal jurisdiction analysis that are outside the FAC and derived from the parties' affidavits and exhibits are set forth below. (See § III.B.2, infra).
1. The Parties
Leong, a Portuguese citizen and resident, “is an accomplished and skilled Portuguese photojournalist with over 20 years of experience covering global news[.]” (ECF No. 52 ¶ 6; see id. ¶ 26). Since 2005, Leong has been registered with Portugal's Carteira Profissional de Jornalista (i.e., Journalists' Professional License Committee), under the professional name, “Francisco Leong.” (Id. ¶ 27). “Leong's photographs depict a range of newsworthy events, from pivotal political events to international armed conflicts to major sporting events.” (Id. ¶ 28). He has covered conflicts in Ukraine, Syria, and Libya, among others. (Id. ¶ 30). His “photographs exhibit creativity [and] originality, and are the result of Leong's intellectual efforts as a photojournalist.” (Id. ¶ 31). Leong does not allege that he took any photographs in the United States.
The Court employs Leong's preferred name in the FAC. (ECF No. 52 at 1; id. ¶ 27).
AFP “is a French state-owned corporation, with its main North America location” in Washington, D.C., and a satellite office in New York City. (ECF No. 52 ¶ 7). Although AFP is headquartered in Paris, France, it “has over 2,400 staff and news bureaus in 160 countries in 201 locations.” (Id. ¶ 32). AFP “reports the news directly through its website at AFP.com,” but Leong alleges that its “primary business is to generate editorial content that newspapers and news reporting organizations license from AFP and incorporate into their own global news reporting.” (Id. ¶ 33). AFP develops this “editorial content” through two streams: (i) “stringers[,]” who are freelancers or independent contractors, and (ii) “staffers[,]” who are editorial employees who “produce the written and audiovisual content made available through the AFP Wire Service [(the ‘Wire Service')], a subscription service that allows subscribers (primarily news outlets) to access content that is often critical to the reporting of global news.” (Id. ¶ 34). In addition to the Wire Service, “AFP licenses editorial photographs through AFP Forum (www.afpforum.com) [(‘AFP Forum').]” (Id. ¶ 35). “Through AFP Forum . . . AFP distributes photographs through its international wire and databank, which allows subscribers to access publicly displayed photos either as part of a subscription plan or on an ‘a la carte' basis.” (Id. ¶ 36). Each photograph from the AFP Forum contains a blue “AFP” icon. (Id. ¶ 37).
In the FAC, Leong alleged that the Getty Defendants are Delaware corporations with principal places of business in Seattle and an office in New York City. (ECF No. 52 ¶ 8). In the Motion, Getty U.S. admits that is a New York corporation, a fact that Leong now embraces. (ECF Nos. 54 at 7 n.2; 85 at 28-29, 31). Although pointing to the Motion is a curious mechanism for Leong to purport to amend such an important allegation, nevertheless, because it is undisputed, the Court accepts as true for purposes of the Motion that Getty U.S. is a New York domiciliary. The Getty Defendants maintain an internet platform, www.gettyimages.com (the “Getty Platform”). (ECF No. 52 ¶ 38). Images on the Getty Platform bear a “gettyimages” watermark, which also appears in a photograph's metadata. (Id. ¶¶ 39-40). AFP and the Getty Defendants have “an ongoing partnership[,]” through which AFP “licenses content through” the Getty Platform. (Id. ¶ 38)
2. Leong's Relationship with AFP
Between February 20, 2005 and November 30, 2018, Leong “captured, curated, and licensed” to AFP 34,716 of his photographs (the “Leong Photographs”). (ECF No. 52 ¶ 42; see ECF Nos. 52-2 - 52-28). Each of the Leong Photographs contained metadata indicating Leong as the creator, and the date, time, and location of the image (the “Metadata”). (ECF No. 52 ¶ 43). Leong selected and sent the Leong Photographs “to AFP for authorized commercialization through AFP's various services[.]” (Id. ¶ 44). After receiving one of the Leong Photographs, AFP would routinely: (i) distribute it through the Wire Service; (ii) add it to the AFP Forum for public display and licensing; and (iii) share it with the Getty Defendants “for additional downstream public display and licensing.” (Id. ¶ 45). Leong alleges on information and belief that AFP removed the Metadata from the Leong Photographs and added the “AFP” icon. (Id.)
The Leong Photographs were created during two time periods: from February 20, 2005 through October 31, 2010, while Leong was a stringer (the “Stringer Period”), and from November 1, 2010 through November 30, 2018, while Leong was an AFP employee (the “Staffer Period”). (ECF No. 52 ¶ 46). During both the Stringer and the Staffer Periods, Leong believed he was the sole owner of the Leong Photographs, and that he “authorized and approved of AFP's commercialization of the Leong Photographs, as well as the attribution of AFP and Getty Defendants . . . on such photographs, across all of AFP's various avenues of commercial exploitation[.]” (Id. ¶¶ 47-48). During the Stringer Period, Leong received hourly compensation, and during the Staffer Period, received a salary and benefits. (Id. ¶ 48). Sometime after his employment with AFP ended, he obtained 21 United States copyright registrations for 8,657 photographs (the “2018-19 Registered Works”). (Id. ¶ 47; ECF No. 52-29 at 2).
a. The Stringer Period
During the Stringer Period, Leong licensed more than 10,000 photographs to AFP for editorial and commercial use (the “Stringer Photos”), albeit without a written contract. (ECF No. 52 ¶ 49). Leong consented to AFP's commercialization of the Stringer Photos, but AFP did not claim to own them and understood that Leong was their owner. (Id. ¶¶ 50-51, 54). Rather, Leong asserts that, “[u]nder Portuguese law,” he owned the copyrights in the Stringer Photos. (Id. ¶ 55).
b. The Staffer Period
On November 1, 2010, Leong signed an employment contract (the “2010 Agreement”) pursuant to which he became a full-time AFP employee. (ECF No. 52 ¶ 56). The 2010 Agreement contemplated that Leong's “usual workplace” was “the AFP's newsroom in Lisbon[.]” (ECF No. 56-1 at 4 ¶ 2(a)). As a Staffer, Leong was eligible under Portuguese law for several employee benefits, including reimbursement for overnight stays while on assignment. (ECF No. 52 ¶ 57). During the Staffer Period, AFP failed to compensate Leong for overtime pay and failed to reimburse him for over 600 overnight stays. (Id. ¶¶ 80-81).
During the Staffer Period, Leong licensed over 23,000 of his photographs (the “Staffer Photos”) to AFP for editorial use and commercial exploitation under clause 7 of the 2010 Agreement, which provided:
The journalist recognizes and accepts that in the fixed amount pay [sic] he receives, is included the cession to [AFP], on an exclusivity title, of the exploitation rights (reproduction, representation, adaptation and distribution), how many times the AFP deems it necessary, from the writings, images, sounds, videos, infographics made by him, by any means, in any language and in any form, namely digital, by all present or future media forms, on all present or future electronic storage devices, such as databases and online search engines, so AFP can market them directly or through its distributors, partners or branches, with its customers for the set of present and future products and services. The present encumbrance is valid for the entire time of the literary and artistic protection and for the whole world.(ECF No. 52 ¶ 59 (“Clause 7”)). Leong alleges that Clause 7 neither assigned ownership or completely transferred his copyrights in the Leong Photographs because it failed to meet several requirements of Portuguese law, such as being “accompanied by a notarized public deed[.]” (Id. ¶¶ 60-61). He alleges that he intended Clause 7 “to grant AFP the right to use the Leong Photographs[,]” not “to transfer copyright ownership” or assign his copyrights to AFP. (Id. ¶ 63). Leong alleges that, under Portuguese law, “the only plausible and reasonable reading of Clause 7 of the 2010 Agreement is that such clause granted AFP an exclusive license to commercialize and exploit the Leong Photographs, including but not limited to all of the activities that AFP undertook with respect to the Leong Photographs prior to April 17, 2019, and to include attribution of AFP and Getty Defendants . . . on and in connection with such photographs.” (ECF No. 52 ¶ 70 (emphasis added)).
The Court quotes the uncertified translation of Clause 7 that appears in the FAC. (ECF No. 52 ¶ 59; see id. at 13 n.3). Defendants have provided a certified translation of the 2010 Agreement, in which, among other differences, the last sentence of Clause 7 is translated as, “This assignment is valid for the entire duration of the literary and artistic protection and on a global basis.” (ECF No. 56-1 at 5 ¶ 7 (emphasis added); see ECF No. 56 ¶ 27 (disputing the accuracy of Leong's translation of Clause 7 in the FAC)). For purposes of analyzing the Motion, the Court does not need to resolve which translation is correct.
The 2010 Agreement is governed by Portuguese labor law and the “Collective Labor Agreement between the Union of Journalists and the Portuguese Press Association” published on June 30, 2010 (the “CLA”). (ECF No. 52 ¶¶ 65-67). The CLA includes a provision governing journalists' copyrights, which incorporates the Portuguese “Code of Copyright” (the “Portuguese Code”) and “Journalist Statute” (the “Portuguese Statute”) and states, inter alia, a “journalist has the exclusive right to authorize . . . all uses of works not included in the object of the employment contract . . . namely, communications to the public, or transmission in whole or in part, of the respective copyright.” (Id. ¶ 67). Thus, the Portuguese Code and Statute “govern copyright issues arising under the 2010 Agreement.” (Id. ¶ 68). The 2010 Agreement also contains a forum selection clause (“Clause 15”), which provides that “[a]ny litigation arising from” the 2010 Agreement “will fall under the jurisdiction of the Lisbon District Court, with expressed resignation of any other.” (ECF No. 1-2 at 7).
c. Leong's Termination
In late 2017, after AFP's Lisbon bureau closed, AFP's Madrid bureau “began managing AFP's Portuguese journalists and staff and, contrary to Portuguese labor law, pressured them to be available and ‘on call' 24 hours per day, 7 days per week, even on days off.” (ECF No. 52 ¶ 82). In January 2018, AFP's Portuguese journalists, including Leong, obtained domestic press credentials and became members of the Portuguese journalists' labor union, Sindicato dos Jornalistas (“SJ”). (Id. ¶¶ 83-84). In September 2018, Leong, through his lawyer, Joao Poelho, sent a letter to AFP seeking reimbursement for overtime and over 600 overnight stays. (Id. ¶ 84). On November 25, 2018, Leong was elected as SJ's union delegate for AFP journalists in Portugal. (Id. ¶ 86). On November 29, 2018, AFP learned of Leong's election as union delegate, and the next day, November 30, 2018, emailed Leong a “Notice of Fault” suspending him for misconduct and dereliction of duties in connection with reporting on a forest fire in Portugal in October 2018 (the “Notice”). (Id. ¶¶ 86-87; see id. ¶¶ 92-96).
On March 29, 2019, AFP wrongfully terminated Leong's employment. (ECF No. 52 ¶ 88). Leong alleges that “AFP intentionally falsified and misrepresented ‘performance' issues to support a pretextual termination of Leong's lengthy employment with AFP[,]” retaliated against him for his union activities, and discouraged other Portuguese journalists from seeking reimbursement for overnight stays. (Id. ¶¶ 98-101). Leong alleges that his termination “constituted a willful and material breach of the 2010 Agreement[,]” in violation of the CLA and several articles of Portuguese labor law. (Id. ¶ 102). He contends that AFP's breach of the 2010 Agreement was “so substantial and fundamental . . . as to strongly tend to defeat the object of the parties . . . and giving rise to a right of rescission” that “created a legal basis for Leong to terminate AFP's license under Clause 7[.]” (Id. ¶¶ 103, 105).
3. The First Portuguese Proceeding
On April 8, 2019, Leong filed in “Portuguese labor court” (the “Labor Court”) a wrongful termination claim against AFP. (ECF No. 52 ¶ 89 (the “First Portuguese Proceeding”)). On April 17, 2019, Leong sent to AFP an email repudiating Clause 7 and demanding that AFP “cease and desist ‘from disclosing and/or publishing and/or economically exploit[ing]' the Leong Photographs.” (Id. ¶¶ 90, 106 (the “April 17 Email”)). On May 19, 2019, following an evidentiary hearing, the Labor Court preliminarily enjoined AFP's termination of Leong as “likely wrongful” because AFP's assertions in the Notice lacked evidentiary support. (Id. ¶¶ 91-96).
On July 4, 2019, AFP and Leong entered into a settlement agreement pursuant to which AFP agreed to pay a sum to Leong to settle his labor claims, with an express carveout for claims regarding Leong's “author rights” under Clause 7, in exchange for dismissal of the First Portuguese Proceeding. (ECF No. 1-3 at 6 ¶ 9 (the “Settlement Agreement”); see ECF No. 52 ¶ 131). Leong acknowledged that the sum he received under the Settlement Agreement represented “all the credits arising from the negotiation, celebration, execution[,] and termination of” the 2010 Agreement. (ECF No. 1-3 at 4 ¶ 5). Leong alleges on information and belief that, around the same time AFP entered the Settlement Agreement, AFP circulated to the Getty Defendants and AFP's licensees a “kill notice” for the Leong Photographs. (ECF No. 52 ¶ 134).
The Settlement Agreement, which Leong attached to the Complaint, carved out “any type of claim regarding to author rights which [Leong] intends to present against [AFP], or of any entity within the same group or related to [AFP], including without limitation regarding the discussion of the interpretation and application of Clause [7] of the [2010 Agreement].” (ECF No. 1-3 at 6 ¶ 9).
4. The Second Portuguese Proceeding
On December 27, 2019, Leong filed a second case against AFP in the District Court of Lisbon, Labour Section (the “Lisbon District Court”), challenging the validity of Clause 7. (ECF No. 52 ¶ 136 (the “Second Portuguese Proceeding”); see ECF No. 40-8 at 3). Invoking Clause 7 of the 2010 Agreement, Leong alleged that, after he was terminated, AFP “continued to sell the [Leong Photographs], across the whole world and for all purposes . . . [w]ithout [Leong's] authorization . . . .” (ECF No. 40-8 at 13 ¶¶ 23-24). Leong alleged that he “never granted, by any means or form, express or implicit authorization for [AFP] to use his photographs, without limits to their use and in infringement of the law on this matter, that is, in addition to making them available to the public thirty days after publication on the [AFP Forum], their offering as an online service, or for non-journalistic purposes.” (Id. at 15 ¶ 34). Leong argued that the Leong Photographs were “considered works protected under the Portuguese Code . . . and Related Rights and in this act[,]” and that he did not “authorize [AFP], in fact and in law, within the scope of his employment contract, to reproduce his photographs beyond the limits and purposes provided for in the law governing his profession as a journalist and outside the scope of his employment contract and/or journalistic activity for” AFP. (Id. at 17 ¶ 50, 20 ¶ 64). Alleging that AFP's “marketing” of the Leong Photographs was an “infringement,” Leong sought: (i) a declaration that Clause 7 was “null and void”; (ii) an order barring AFP from “using, exploiting, reproducing, [or] selling . . .” the Leong Photographs; (iii) grant Leong access to all photographs in AFP's “database”; (iv) award per diem damages plus a penalty of €500.00 per day, per photograph; and (v) an award of court fees and expenses. (Id. at 21 ¶ 68, 22-24 ¶¶ A-G).
Leong alleges “[i]n the alternative” and on information and belief that, if AFP had not already done so pursuant to the Settlement Agreement, at the time of the Second Portuguese Proceeding, it circulated a “kill notice” for the Leong Photographs to the Getty Defendants, licensees, and customers. (ECF No. 52 ¶ 138).
A bench trial was scheduled to begin in the Second Portuguese Proceeding on April 26, 2022. (ECF No. 31 ¶ 18). The issues that were to be decided during that trial included: (i) the validity of Clause 7 of the 2010 Agreement; and (ii) the copyright protection and Leong's rights in the Staffer Photos. (Id. ¶ 19). On April 5, 2022, however, based on Leong's notice of withdrawal, the Lisbon District Court dismissed the Second Portuguese Proceeding and cancelled the trial (the “Dismissal Order”). (ECF Nos. 38-1 at 4; 40-1 at 6).
Leong's translation of the Dismissal Order states, “I hereby ratify abandonment of the claim made by [Leong] . . ., and as a result, I hereby declare the action dismissed[,]” citing Articles 277(d), 283(1), 285(1), 286(2), 289, and 290 of the Portuguese Civil Procedure Code and Article 1(2)(a) of the Portuguese Labour Procedure Code. (ECF No. 37-2 at 42). Defendants have disputed Leong's translation of the Dismissal Order, contending that the correct translation is, “I hereby validate the withdrawal of the claim submitted by [Leong] . . . and, as a result, I hereby declare that the right that [Leong] intended to assert is extinguished[,]” (ECF No. 40-1 at 6). Again, for purposes of deciding the Motion, the Court does not need to resolve which translation is correct.
5. The Morel Litigation
In 2010, AFP filed an action in this District seeking a declaratory judgment that AFP did not infringe copyrights in photographs photojournalist Daniel Morel (“Morel”) took of the 2010 earthquake in Haiti (the “Morel Photographs”). (ECF No. 52 ¶ 71; see Agence France Presse v. Morel, No. 10 Civ. 2730 (AJN) (S.D.N.Y.) (the “Morel Litigation”)). On January 14, 2010, AFP circulated to its licensees a “kill notice” stating that the Morel Photographs should no longer be used due to a potential copyright dispute. (ECF No. 52 ¶¶ 73-74). During the Morel Litigation, it was revealed that the “Getty Defendants circulated similar notifications to [their] licensees[,] instructing them to discontinue use of the Morel Photographs.” (Id. ¶ 75). After a jury trial, the Honorable Alison J. Nathan upheld the jury's award of $1.2 million in damages based on the finding that AFP and the Getty Defendants willfully infringed Morel's copyrights and violated the CMI in eight of the Morel Photographs. (Id. ¶¶ 76-77). See Agence France Presse v. Morel, No. 10 Civ. 2730 (AJN), 2014 WL 3963124, at *8 (S.D.N.Y. Aug. 13, 2014).
6. Alleged Infringement by AFP
Leong alleges that, because the April 17 Email “repudiated and rescinded the 2010 Agreement and terminated AFP's license under Clause 7 . . . AFP's use of the Leong Photographs after April 17, 2019-and any other third-party use of the Leong Photographs authorized by AFP as of that date-was unauthorized and infringed Leong's copyrights in the Leong Photographs.” (ECF No. 52 ¶ 108). Leong alleges that despite his “termination of AFP's license upon transmission of [the] April 17 Email, AFP continued reproducing, distributing, publicly displaying, marketing, selling, creating derivative works from, holding out for license, and otherwise commercially exploiting the Leong Photographs, which amounted to infringement[.]” (Id. ¶ 109). The FAC includes examples of Leong Photographs that “AFP continued to hold out for license and publicly display . . . via [the] AFP Forum” using the AFP icon after April 17, 2019. (Id. ¶¶ 110, 112- 13). AFP's continued use of the AFP icon on the Leong Photographs constituted “false CMI” that “falsely suggested to third parties that AFP still had the right to use or authorize use” of the Leong Photographs and “concealed AFP's infringement and induced others to ‘license' [them] from AFP[.]” (Id. ¶ 113; see id. ¶¶ 2-3, 114). AFP knew or should have known that distribution of the Leong Photographs with false or altered CMI-i.e., that removed the Metadata and displayed the AFP icon-would facilitate or conceal infringement by AFP and non-parties that are domiciliaries of the United Kingdom, New York, Delaware, and California (the “Downstream Infringers”). (Id. ¶¶ 4, 22, 115).
In addition, after receiving the April 17 Email, AFP continued to license the Leong Photographs to the Getty Defendants and commercialize the Leong Photographs through Media Storehouse. (ECF No. 52 ¶¶ 111, 116-17). Leong alleges that “AFP's use and commercial exploitation of the Leong Photographs after April 17, 2019 constituted willful infringement of Leong's copyrights in the Leong Photographs,” including the 2018-19 Registered Works. (Id. ¶ 118; see id. ¶¶ 119-22).
7. Alleged Infringement by the Getty Defendants
During both the Stringer and Staffer Periods, the Getty Defendants, through their partnership with AFP, cooperated with AFP to offer the Leong Photographs for third-party licensing through the Getty Platform. (ECF No. 52 ¶ 123). The Getty Defendants continued to do so after April 17, 2019 until “at least” December 2019. (Id. ¶¶ 124-25, 142-44). Because the April 17 Email terminated AFP's license to use the Leong Photographs, the Getty Defendants' continued use after April 17, 2019 was unauthorized and “willfully infringed Leong's copyrights in the Leong Photographs.” (Id. ¶ 126). Leong alleges on information and belief that multiple parties accessed and licensed the Leong Photographs through the Getty Platform after April 17, 2019. (Id. ¶¶ 127-28). Leong also alleges on information and belief that the Getty Defendants continued commercially exploiting the Leong Photographs through the Getty Platform after July 4, 2019, and after December 27, 2019, “with knowledge that such uses of the Leong Photographs were unauthorized.” (Id. ¶¶ 135, 139).
On July 24, 2020, Leong's counsel sent the Getty Defendants' counsel a notice of investigation of copyright claims with respect to eight Leong Photographs (the “July 24 Notice”). (ECF No. 52 ¶ 140). Thus, at least as of July 24, 2020, the Getty Defendants were aware of the infringement of the Leong Photographs, “but did not take down any of the Leong Photographs for several weeks after receiving the July 24 Notice.” (Id. ¶ 145). The Getty Defendants continued to display and offer on the Getty Platform the Leong Photographs with the “gettyimages” watermark and metadata, which constituted false CMI that concealed the Getty Defendants' infringement and inducted others to license the Leong Photographs without Leong's authorization. (Id. ¶¶ 147-50). As of December 30, 2021, the Getty Defendants continued to reproduce, distribute, and commercially exploit “many Leong Photographs in blatant and willful disregard for Leong's copyrights[.]” (Id. ¶ 151).
8. Downstream Infringers
The FAC lists the Downstream Infringers, and names as “[n]ominal defendants” John Does 1-100 and XYZ Corporations 1-100. (ECF No. 52 ¶¶ 9-22).
The Getty Defendants' content license agreement requires them to notify their licensees “that any content may be subject to a claim of infringement of a third party's right for which [the] Getty [Defendants] may be liable,” and requires the licensees “to immediately, and at [their] own expense: cease using the content, delete or destroy any copies; and ensure that [their] clients, distributors and/or employer[s] do likewise.” (ECF No. 52 ¶ 154). Leong alleges on information and belief that agreements between AFP and the Getty Defendants provide for revenue sharing of licensing fees and contain AFP's “obligation to notify [the] Getty [Defendants] to immediately cease using works that are subject to a claim of infringement.” (Id. ¶ 155). Leong alleges on information and belief that, by January 2022, the Getty Defendants had instructed all customers and licensees who had acquired a Leong Photograph to discontinue use. (Id. ¶ 156). Despite this notification, the Downstream Infringers, with the knowledge and contribution of AFP and the Getty Defendants, continued to engage in unauthorized and infringing uses of the Leong Photographs. (Id. ¶¶ 157-58). Leong alleges that AFP and the Getty Defendants knew or had reason to know of, and are therefore contributorily and vicariously liable for, each of the Downstream Infringers' conduct described below. (Id. ¶¶ 163-64, 172-73, 178-79, 184-85, 194-95, 200-01, 206-07, 212-13, 218-19, 224-25, 230-31).
a. Media Storehouse, Ltd.
Media Storehouse, Ltd. (“Media Storehouse”), is a United Kingdom entity headquartered in England that partnered with AFP to sell items featuring AFP photographs in the United States. (ECF No. 52 ¶¶ 9, 41). After the April 17 Email, AFP continued to commercialize the Leong Photographs via Media Storehouse. (Id. ¶ 111).
b. NYP Holdings
NYP Holdings, Inc. (“NYP”) is a Delaware entity with a principal place of business in New York that manages The New York Post. (ECF No. 52 ¶ 12). On or about May 26, 2020, NYP, through the Getty Platform, accessed one of the Leong Photographs, as to which Leong had obtained a copyright registration on August 25, 2019 (the “Ho Photograph”), and included it in an article on the NYP website. (Id. ¶¶ 159-60 (the “NYP Article”)). As of the filing of the FAC, the NYP Article containing the Ho Photograph is publicly displayed on NYP's website in a manner that infringes Leong's copyright. (Id. ¶¶ 161-62).
c. Breitbart News Network, LLC
Breitbart News Network, LLC (“Breitbart”) is a Delaware entity with a principal place of business in California. (ECF No. 52 ¶ 15). On or about May 26, 2020, Breitbart, through the Getty Platform, accessed the Ho Photograph and included it, without credit to Leong, in an article on the Breitbart website. (Id. ¶ 165 (the “First Breitbart Article”)). As of the filing of the FAC, the First Breitbart Article containing the Ho Photograph is publicly displayed on Breitbart's website. (Id. ¶ 166).
On or about October 6, 2021, Breitbart, through the Getty Platform, accessed one of the Leong Photographs for which Leong had obtained a copyright registration as of December 7, 2018 (the “Twitch Photograph”)), and included it in an article published on the Breitbart website (the “Second Breitbart Article”). (ECF No. 52 ¶¶ 168-69). As of the filing of the FAC, the Second Breitbart Article containing the Twitch Photograph continues to appear on Breitbart's website in a manner that infringes Leong's copyright. (Id. ¶¶ 170-71).
d. The Arena Group
The Arena Group Holdings, Inc. (“Arena”) is a Delaware corporation with a principal place of business in New York that operates several journalism and publishing brands including “The Spun” by Sports Illustrated. (ECF No. 52 ¶ 20). On or about February 11, 2020, Arena, through the Getty Platform, accessed one of the Leong Photographs for which Leong had obtained a copyright registration as of September 9, 2019 (the “Surfer Photograph”), and included it in an article published on “The Spun” (the “Arena Article”). (Id. ¶¶ 174-75). As of the filing of the FAC, Arena continues to display the Arena Article containing the Surfer Photograph on “The Spun” website in a manner that infringes Leong's copyright. (Id. ¶¶ 176-77).
e. The New York Times Company
The New York Times (“NYT”) is a New York corporation with its principal place of business in New York. (ECF No. 52 ¶ 16). The Athletic Media Company (“Athletic”) is a Delaware corporation with a principal place of business in California that operates “The Athletic,” a sports coverage website owned by NYT. (Id. ¶ 17). On or about May 14, 2019, NYT, through the Getty Platform, accessed one of the Leong Photographs for which Leong had obtained a copyright registration as of September 9, 2019 (the “Singer Photograph”), and included it in a NYT article (the “First NYT Article”). (Id. ¶¶ 186-87). As of the date of the FAC, the First NYT Article containing the Singer Photograph continues to appear on the NYT website in a manner that infringes Leong's copyright. (Id. ¶¶ 188-89).
On or about August 7, 2019, NYT and/or Athletic, through the Getty Platform, accessed one of the Leong Photographs for which Leong had obtained a copyright as of December 7, 2018 (the “Soccer Photograph”), and included it in an article published on “The Athletic” (the “Athletic Article”). (ECF No. 52 ¶¶ 180-81). As of the date of the FAC, the Athletic Article containing the Soccer Photograph continues to appear on “The Athletic” website in a manner that infringes Leong's copyright. (Id. ¶ 183).
On or about October 10, 2019, NYT, through the Getty Platform, accessed one of the Leong Photographs for which Leong had obtained a copyright registration as of January 3, 2019 (the “Nobel Photograph”), and included it in a NYT article (the “Second NYT Article”). (ECF No. 52 ¶¶ 190-91). As of the filing of the FAC, the Second NYT Article containing the Nobel Photograph continues to appear on the NYT website in a manner that infringes Leong's copyright. (Id. ¶¶ 192-93).
f. Forbes Media LLC
Forbes Media LLC (“Forbes”) is a Delaware entity with a principal place of business in New Jersey. (ECF No. 52 ¶ 14). On or about March 29, 2020, Forbes, through the Getty Platform, accessed one of the Leong Photographs for which Leong had obtained a copyright registration as of February 12, 2019 (the “Wave Photograph”), and included it, without a credit to Leong, in an article (the “Forbes Article”). (Id. ¶¶ 196-97). As of the filing of the FAC, the Forbes Article containing the Wave Photograph continues to appear on the Forbes website in a manner that infringes Leong's copyright. (Id. ¶¶ 198-99).
g. Bloomberg L.P. and BNA
Bloomberg L.P. and Bloomberg Finance L.P. are Delaware limited partnerships headquartered in New York that operate Bloomberg News and the website https://www.bloomberg.com (together, “Bloomberg News”). (ECF No. 52 ¶ 10). The Bureau of National Affairs, Inc. (“BNA”), is a Delaware publisher headquartered in Virginia that operates the Bloomberg Law website, http://www.bloomberglaw.com (the “BNA Website”). (Id. ¶ 11).
On or about April 29, 2020, BNA, through the Getty Platform, accessed one of the Leong Photographs for which Leong had obtained a copyright registration as of January 15, 2019 (the “Speaker Photograph”), and included it in an article published on the BNA Website (the “First Bloomberg Article”). (ECF No. 52 ¶¶ 202-03). As of the filing of the FAC, the First Bloomberg Article containing the Speaker Photograph continued to appear on the BNA Website in a manner that infringes Leong's copyright. (Id. ¶¶ 204-05).
On or about January 31, 2021, Bloomberg News, through the Getty Platform, accessed one of the Leong Photographs for which Leong had obtained a copyright registration as of December 31, 2018 (the “Handshake Photograph”), and included it in a Bloomberg News Article (the “Second Bloomberg Article”). (ECF No. 52 ¶¶ 208-09). As of the filing of the FAC, the Second Bloomberg Article containing the Handshake Photograph continues to appear on the Bloomberg News website in a manner that infringes Leong's copyright. (Id. ¶¶ 210-11).
h. Dotdash Meredith
Dotdash Meredith, Inc. (“Dotdash”) is a Delaware corporation with a principal place of business in New York that operates People magazine and the website, https://people.com. (ECF No. 52 ¶ 18). On or about May 29, 2019, Dotdash, through the Getty Platform, accessed one of the Leong Photographs for which Leong had obtained a copyright as of January 5, 2019 (the “Ronaldo Photograph”), and included it in a People magazine article (the “People Article”). (Id. ¶¶ 214-15). As of the filing of the FAC, the People Article containing the Ronaldo Photograph continues to appear on the People website in a manner that infringes Leong's copyright. (Id. ¶¶ 216-17).
i. Heavy, Inc.
Heavy, Inc. (“Heavy”) is a California entity with a principal place of business in New York that owns an aggregation platform. (ECF No. 52 ¶ 13). On or about February 13, 2020, Heavy, through the Getty Platform, accessed one of the Leong Photographs for which Leong had obtained a copyright registration as of February 12, 2019 (the “Botelho Photograph”), and included it an article on Heavy's website (the “Heavy Article”). (Id. ¶¶ 220-21). As of the filing of the FAC, the Heavy Article containing the Botelho Photograph continued to appear on Heavy's website in a manner that infringes on Leong's copyright. (Id. ¶¶ 222-23).
j. BuzzFeed
BuzzFeed, Inc. (“BuzzFeed”) is a Delaware internet media, news, and entertainment corporation with a principal place of business in New York, and operates the website, https://www.buzzfeed.com. (ECF No. 52 ¶ 19). On or about March 14, 2019, BuzzFeed, through the Getty Platform, accessed one of the Leong Photographs for which Leong had obtained a copyright registration as of December 7, 2018 (the “Krikorian Photograph”), and included it in a BuzzFeed News article (the “BuzzFeed Article”). (Id. ¶¶ 226-27). As of the filing of the FAC, the BuzzFeed Article containing the Krikorian Photograph continued to appear on the BuzzFeed website in a manner that infringes on Leong's copyright. (Id. ¶¶ 228-29).
9. Leong's Claims in the FAC
In the FAC, Leong alleges that Defendants engaged in a “massive and systematic copyright infringement” of the Leong Photographs, and that Defendants attempted to “cover their tracks” by falsifying CMI. (ECF No. 52 ¶¶ 2-3). The theory underlying the FAC is that, in Clause 7, under Portuguese law, Leong granted “a license of rights to AFP to use the Leong Photographs, not an assignment of rights to AFP.” (Id. ¶ 63; see id. ¶¶ 55, 61, 64, 67-68, 70, 105-08). Leong asserts two claims under the Act: (i) copyright infringement under §§ 504(c)(1) and (2), (id. ¶¶ 232-51 (the “Copyright Claim”)); and (ii) violation of CMI under § 1202(a) (id. ¶¶ 252-60 (the “CMI Claim”)). Leong seeks declaratory relief, disgorgement of profits, statutory damages, injunctive relief, attorneys' fees and costs, punitive damages, and pre- and post-judgment interest. (Id. at 59-62).
B. Procedural History
On December 30, 2021, Leong filed the original complaint (the “Complaint”), which sought a declaratory judgment against AFP as to the copyright ownership of the Leong Photographs pursuant to the Act and Portuguese law, asserted copyright infringement and CMI claims against all Defendants, and asserted contributory and vicarious copyright infringement and CMI claims against AFP only. (ECF No. 1 ¶¶ 87-153). Attached as exhibits to the Complaint were the 2010 Agreement (with an uncertified translation) and the Settlement Agreement. (ECF Nos. 1-1 - 1-3). In a stipulation so-ordered by the Court, Defendants agreed to accept service of the Complaint, and Leong agreed to extend their time to respond to the Complaint. (ECF No. 25 (the “Stipulation”)). The Stipulation did not include a reference to preserving any defenses. (Id.)
On March 14, 2022, Defendants filed a motion to stay this action, citing the pendency of the Second Portuguese Proceeding, which was then scheduled for trial in April 2022. (ECF Nos. 28; 29 at 4, 9 (the “Stay Motion”)). In the Stay Motion, Defendants stated that they did “not waive any potentially applicable defenses or other arguments as to why [Leong]'s claims fail, and [did] not concede the truth of any allegations in the Complaint.” (ECF No. 29 at 5 n.1). Following a conference with the parties on June 14, 2022, the Court permitted Leong to file an amended complaint, set a briefing schedule for the Motion, and denied the Stay Motion as moot. (ECF No. 45). On July 15, 2022, Leong filed the FAC, which attached the Leong Photographs, the 2018-19 Registered Works and examples of the Media Storehouse products, but not the 2010 Agreement or the Settlement Agreement. (ECF Nos. 52 - 52-30).
On August 19, 2022, Defendants filed the Motion. (ECF Nos. 53-56). On September 19, 2022, Leong opposed the Motion (the “Opposition”) (ECF Nos. 58-63), and requested that the Court take judicial notice of information on Defendants' websites. (ECF No. 64 (the “Request”)). On October 7, 2022, Defendants filed their reply. (ECF No. 70). At the parties' request, on December 19, 2022, the Court heard oral argument on the Motion. (ECF Nos. 74; 78; 80; 85; see ECF min. entry Dec. 20, 2022). With the Court's permission, the parties each filed supplemental letters after oral argument. (ECF Nos. 85 at 70-72; 87; 89).
III. DISCUSSION
“[A] federal court has leeway ‘to choose among threshold grounds for denying audience to a case on the merits.'” Sinochem Int'l v. Malaysia Int'l Shipping Corp., 549 U.S. 422, 431 (2007) (quoting Ruhrgas AG v. Marathon Oil Co., 526 U.S. 574, 585 (1999)); see Figueiredo Ferraz E Engenharia de Projeto Ltda. v. Rep. of Peru, 665 F.3d 384, 389 (2d Cir. 2011). Therefore, “[a] district court may . . . dispose of an action by a forum non conveniens dismissal, bypassing questions of subject-matter and personal jurisdiction, when considerations of convenience, fairness, and judicial economy so warrant.” Sinochem, 549 U.S. at 432. The Court first addresses the forum non conveniens analysis before, for completeness, analyzing whether personal jurisdiction over AFP exists (see § III.B, infra).
Defendants include a two-sentence argument, devoid of substance or legal authority, that Paulo “is precluded from challenging the validity of Clause 7 after having withdrawn” the Second Portugal Action, and referencing the Stay Motion. (ECF No. 54 at 30). Defendants having failed to properly and diligently put this argument before the Court, and given the recommendations as to the other grounds for dismissal, the Court does not address the merits of this insufficiently presented argument.
A. Forum Non Conveniens
1. Legal Standard
The doctrine of forum non conveniens permits a court to dismiss a case “when an alternative forum has jurisdiction to hear [the] case, and . . . trial in the chosen forum would establish . . . oppressiveness and vexation to a defendant . . . out of all proportion to plaintiff's convenience, or . . . the chosen forum [is] inappropriate because of considerations affecting the court's own administrative and legal problems.” Sinochem, 549 U.S. at 432 (emphasis added).
The Second Circuit has set forth a three-step forum non conveniens analysis. See Iragorri v. United Techs. Corp., 274 F.3d 65, 71-75 (2d Cir. 2001) (en banc); see Pollux Holding Ltd. v. Chase Manh. Bank, 329 F.3d 64, 70 (2d Cir. 2003). “First, the court must determine the degree of deference afforded to the plaintiff's choice of forum.” Aenergy, S.A. v. Rep. of Angola, No. 20 Civ. 3569 (JPC), 2021 WL 1998725, at *8 (S.D.N.Y. May 19, 2021) (“Aenergy I”) (citing Iragorri, 274 F.3d at 73), aff'd, 31 F.4th 119 (2d Cir. 2022) (“Aenergy II”). Second, the court must consider “whether an adequate alternative forum exists.” Iragorri, 274 F.3d at 73. “Third, if such a forum exists, the court must ‘balance factors of private and public interest to decide, based on weighing the relative hardships involved, whether the case should be adjudicated in the plaintiff's chosen forum or in the alternative forum suggested by the defendant.'” Aenergy I, 2021 WL 1998725, at *8 (quoting Pollux, 329 F.3d at 70).
Ultimately, a court may dismiss a case based on forum non conveniens “only if the chosen forum is shown to be genuinely inconvenient and the selected [alternative] forum is significantly preferable.” Iragorri, 274 F.3d at 74-75. “The focus of any forum non conveniens inquiry, as the term itself suggests, is to ensure that the place where a trial is held is convenient, that is, that the forum fits the needs and is suitable to the circumstances of the case.” Pollux, 329 F.3d at 67. The “decision to dismiss by reason of forum non conveniens is confided to the sound discretion of the district court, to which substantial deference is given.” Id. at 70 (citing Piper Aircraft Co. v. Reyno, 454 U.S. 235, 257 (1981)).
2. Application
a. Plaintiff's Choice of Forum
“It is familiar law that a plaintiff's choice of forum is entitled to substantial deference.” Pollux, 329 F.3d at 70; see Norex Petroleum Ltd. v. Access Indus., Inc., 416 F.3d 146, 157 (2d Cir. 2005) (“Any review of a forum non conveniens motion starts with ‘a strong presumption in favor of the plaintiff's choice of forum.'”) (quoting Piper Aircraft, 454 U.S. at 255). The “‘degree of deference' afforded a plaintiff's choice of forum ‘varies with the circumstances' and ‘moves on a sliding scale depending on several relevant considerations.'” Aenergy I, 2021 WL 1998725, at *8 (quoting Iragorri, 274 F.3d at 71). Courts afford “greater deference when it appears that the plaintiff or the lawsuit has a ‘bona fide connection to the United States and to the forum of choice' and ‘considerations of convenience favor the conduct of the lawsuit in the United States.'” Aenergy I, 2021 WL 1998725, at *8 (quoting Iragorri, 274 F.3d at 72). Factors relevant to that determination include “the convenience of the plaintiff's residence in relation to the chosen forum, the availability of witnesses or evidence to the forum district, the defendant's amenability to suit in the forum district, the availability of appropriate legal assistance, and other reasons relating to convenience or expense.” Iragorri, 274 F.3d at 72. “On the other hand, a plaintiff's choice of forum deserves less deference if ‘the plaintiff's choice of a U.S. forum was motivated by forum-shopping reasons-such as attempts to win a tactical advantage resulting from local laws that favor the plaintiff's case, the habitual generosity of juries in the United States or in the forum district, the plaintiff's popularity or the defendant's unpopularity in the region, or the inconvenience and expense to the defendant resulting from litigation in that forum.'” Aenergy I, 2021 WL 1998725, at *8 (quoting Iragorri, 274 F.3d at 72).
Thus, “[a] domestic [plaintiff's] choice of its home forum receives great deference, while a foreign [plaintiff's] choice of a United States forum receives less deference.” In re Arb. between Monegasque De Reassurances S.A.M. v. Nak Naftogaz of Ukraine, 311 F.3d 488, 498 (2d Cir. 2002); see Piper Aircraft, 454 U.S. at 256 (explaining that “a foreign plaintiff's choice deserves less deference”); Norex Petroleum, 416 F.3d at 154 (noting that “less deference is afforded a foreign plaintiff's choice of a United States forum”). “[A] plaintiff's foreign status[,]” however, “is not dispositive,” Aenergy I, 2021 WL 1998725, at *9 (citing Norex Petroleum, 416 F.3d at 157), “and ‘the fact that [a] plaintiff is foreign does not . . . render the forum choice completely undeserving of respect[.]'” Aenergy I, 2021 WL 1998725, at *9 (quoting Metito (Overseas) Ltd. v. Gen. Elec. Co., No. 05 Civ. 9478 (GEL), 2006 WL 3230301, at *3 (S.D.N.Y. Nov. 7, 2006)). As the Second Circuit has cautioned, “when a foreign plaintiff chooses a U.S. forum, it is much less reasonable to presume that the choice was made for convenience” rather than for “forum-shopping reasons, such as the perception that United States courts award higher damages than are common in other countries.” Iragorri, 274 F.3d at 71.
Here, Leong's choice of this forum warrants only minimal deference for at least six reasons. First, this District is not his home forum; he is a Portuguese citizen and photojournalist residing in Lisbon, Portugal. (ECF No. 52 ¶ 6; see ECF Nos. 37 at 7 (Leong is a “licensed professional photojournalist in Portugal”) (emphasis added); 37-4 ¶ 2 (“I am a licensed journalist in Portugal and have been since 2005.”)). Because he is a foreign citizen, his “choice of a United States forum is afforded ‘less deference.'” Aenergy I, 2021 WL 1998725, at *9 (quoting Monegasque De Reassurances, 311 F.3d at 498); see Iragorri, 274 F.3d at 71 (noting that “there is [] little reason to assume that [a U.S. forum] is convenient for a foreign plaintiff”).
Second, only one of the three Defendants is “at home in this District.” Aenergy I, 2021 WL 1998725, at *9. AFP is a French state-owned corporation whose “main North America location” is in Washington, D.C. (ECF No. 52 ¶ 7; see id. ¶ 32 (noting that AFP's headquarters are in Paris)). Getty U.S. is a New York corporation, but maintains its headquarters in Seattle, Washington, as does Getty Images, Inc., which is a Delaware corporation. (Id. ¶ 8; see ECF Nos. 54 at 7 n.2; 85 at 28-29, 31). That AFP maintains an office in New York (ECF No. 52 ¶¶ 7-8), does not equate to AFP being “essentially at home” in this District. See Daimler AG v. Bauman, 571 U.S. 117, 138-39 (2014) (holding that defendants who were neither incorporated nor maintained their principal place of business in California were not “‘essentially at home'” in that state and therefore not subject to general jurisdiction) (quoting Goodyear Dunlop Tires Opers., S.A. v. Brown, 564 U.S. 915, 919 (2011)). The fact that only one of the three Defendants is a New York domiciliary warrants Leong's choice of this forum “some minor deference.” Aenergy I, 2021 WL 1998725, at *9 (affording minimal deference to plaintiffs' choice of forum where only one defendant was “at home in this District”).
Third, Leong, a licensed Portuguese photographer, chose to do business in Portugal with the Portuguese bureau of a French company. (ECF No. 52 ¶¶ 6-7, 82-83). “Courts routinely have little sympathy for plaintiffs . . . who conduct business in foreign lands and later try to cry foul here.” Aenergy I, 2021 WL 1998725, at *9 (collecting cases).
Fourth, “even more telling is the fact that before coming to this Court,” Leong not once, but twice, “chose a different forum to litigate” disputes involving the 2010 Agreement, including the validity of Clause 7. Aenergy I, 2021 WL 1998725, at *10. In the First Portuguese Proceeding, Leong obtained a favorable settlement, and only voluntarily dismissed the Second Portuguese Proceeding after Defendants sought a stay of this action. (ECF Nos. 45; 52 ¶ 131). Leong's “decision to file suit in this District . . . smacks of forum shopping rather than a genuine pursuit of convenience[,]” Aenergy I, 2021 WL 1998725, at *10, and represents the kind of “tactical maneuver [that] is not protected by the deference generally owed to the plaintiffs' choice of forum.” Base Metal Trading SA v. Russian Aluminum, 253 F.Supp.2d 681, 698 (S.D.N.Y. 2003) (affording minimal deference to plaintiffs' choice of forum where they sued in the United States only after “pursu[ing] various remedies in the Russian court system with unsatisfactory results”) aff'd, 98 Fed.Appx. 47 (2d Cir. 2004); see Banco De Seguros Del Estado v. J.P. Morgan Chase & Co., 500 F.Supp.2d 251, 261 (S.D.N.Y. 2007) (affording “little, if any, deference” to plaintiff's chosen forum where other litigation pertaining to the same events was pending in Uruguayan venues).
Leong's reliance on SAS Institute, Inc. v. World Programming Ltd., (see ECF No. 85 at 68), where the Second Circuit noted, in reversing a forum non conveniens dismissal, that the district court placed “undue weight” on parallel litigation in the United Kingdom, is misplaced because there, the district court did not afford appropriate deference to a domestic plaintiff's choice of its home forum. 468 Fed.Appx. 264, 265- 66 (2d Cir. 2012). As discussed above, as a foreign plaintiff, Leong's choice does not merit anything close to the “presumption” to which a domestic plaintiff's choice of its home forum is entitled. (see § III.A.2.a p.24, supra). His reliance on Guidi v. Inter-Continental Hotels Corporation, where the plaintiffs were also American citizens suing in a United States court, is similarly unavailing. 224 F.3d 142, 146-47 (2d Cir. 2000).
Fifth, the main events underlying Leong's claims took place in Portugal, including his creation of many of the Leong Photographs, his entry into the 2010 Agreement, AFP's supervision of his employment as a Staffer, his activities as a union delegate for the SJ, the events that he alleges were the pretext for his firing, and the First and Second Portuguese Proceedings. (ECF No. 52 ¶¶ 82-89, 94-97, 136). In addition, Leong acknowledges that “Defendants' licensed activities occurred in France, Spain, and/or Portugal[.]” (ECF No. 66 at 12 n.6). While some of the non-party Downstream Infringers apparently maintained offices in New York (ECF No. 52 ¶¶ 10, 12, 16, 18-20), the comparatively smaller amount of substantial relevant evidence in this District from the parties weighs against Leong's choice of forum. See Aenergy I, 2021 WL 1998725, at *10 (finding that “the limited number of witnesses in this forum and the fact that much of the relevant evidence will be found in Angola . . . weighs against Plaintiffs' choice of forum”); Owens v. Turkiye Halk Bankasi A.S., No. 20 Civ. 2648 (DLC), 2021 WL 638975, at *4 (S.D.N.Y. Feb. 16, 2021) (declining to afford deference to plaintiffs' choice of forum when “almost all of the relevant evidence is located in Turkey”).
Sixth, in the 2010 Agreement, Leong agreed that a Portuguese court would be the exclusive forum for “[a]ny litigation arising from the present contract[.]” (ECF No. 1-2 at 7 ¶ 15). While he now disputes its applicability, (see ECF Nos. 66 at 23 n.16, 32-33; 85 at 45-46; 89 at 3), Clause 15 represents Leong's bargained-for agreement and “‘legitimate expectation[]'” that a Portuguese court was the “‘most proper forum'” to resolve any disputes arising out of the 2010 Agreement, including the meaning of Clause 7, which he admits is governed by the Portuguese Code and Statute. (ECF No. 52 ¶¶ 67-68). Atl. Marine Const. Co. v. U.S. Dist. Ct. for W. Dist. of Tex., 571 U.S. 49, 59-60 (2013) (quoting Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 33 (1988)). “[A]s the party defying the forum-selection clause,” Leong's “choice of forum merits no weight.” Atl. Marine Const., 571 U.S. at 63 (noting that “[o]nly that initial choice [in the forum selection clause] deserves deference, and the plaintiff must bear the burden of showing why the court should not transfer the case to the forum to which the parties agreed”).
Further, consideration of the Second Circuit's “four-part analysis” for determining “whether to dismiss a claim based on a forum selection clause[,]” reinforces the decision to afford minimal deference to Leong's choice of this forum. Phillips v. Audio Active Ltd., 494 F.3d 378, 383 (2d Cir. 2007). Leong does not dispute his awareness of Clause 15, or its mandatory language, but rather argues that his claims, particularly those against the Getty Defendants, are beyond its scope and that Clause 15 did not survive the supposed termination of the 2010 Agreement. (ECF Nos. 66 at 31-32; 89 at 3). As Defendants' Portuguese experts have demonstrated-and Leong's have not rebutted-the Regulation, combined with the exclusive wording of Clause 15 “foreclose the U.S. as a potential jurisdiction.” (ECF No. 54 at 29; see ECF No. 56 ¶¶ 19, 23). See Banca Di Credito Cooperativo di Civitanova Marche e Montecosaro Soc. Cooperativa v. Small, 852 Fed.Appx. 15, 20 (2d Cir. 2021) (summary order) (explaining that “shall,” “sole,” and “solely” demonstrate exclusive jurisdiction in forum selection clause). While Leong is correct that the Getty Defendants are not parties to the 2010 Agreement, he has chosen to plead his claims against them as inextricably entwined with his claims against AFP, which turn on the meaning of Clause 7 under Portuguese law. (See, e.g., ECF No. 52 ¶¶ 38, 48, 58-65, 67-68, 71, 116, 122, 237). Further, as Defendants' Portuguese experts have attested, even if Leong is correct that the 2010 Agreement has been terminated, Clause 15 survives because “jurisdiction agreements are independent from the contract of which they form part[.]” (ECF No. 72-1 ¶ 46; see ECF No. 71 ¶¶ 21-22). Finally, Leong has not “rebutted the presumption of enforceability by making a sufficiently strong showing that ‘enforcement would be unreasonable or unjust, or that the clause was invalid for such reasons as fraud or overreaching.'” Phillips, 494 F.3d at 383-84 (quoting M/S Bremen v. Zapata Off-Shore Co., 407 U.S. 1, 15 (1972)). Ultimately, even if the Court did not expressly enforce Clause 15, the fact that Leong agreed to it, and filed suit alleging similar claims in a Portuguese court, in accordance with Clause 15, provides strong evidence for Leong's prior preference for Portuguese courts for disputes involving his ownership of the Leong Photographs, until forum shopping considerations drew him to a United States court. (See ECF No. 85 at 41 (“[T]he signs of forum shopping in this case on the part of your client could not be flashing any brighter than they are.”); see id. at 45 (“[I]t is a fact that your client previously agreed to litigate in Portugal.”)).
“Regulation” refers to Regulation (EU) No. 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters. (ECF No. 72-1 ¶ 29; see id. at 9 n.6).
Leong's arguments why his choice of this District warrants “substantial deference” are unavailing. (ECF No. 66 at 11-13). First, he contends that “all of Defendant[s'] infringement for which relief is sought in this case occurred in the U.S., including in New York.” (ECF Nos. 66 (citing ECF No. 52 ¶¶ 122-28, 159-64, 180-219, 226-31); 89 at 1-2). The problem with that argument, however, is that Leong predicates his claims against Defendants on the interpretation of Clause 7under Portuguese law, as “a license of rights to AFP to use the Leong Photographs, not an assignment of rights to AFP.” (ECF No. 52 ¶ 63; see id. ¶¶ 60-61 (alleging that Clause 7 did not use “the terminology used in Portuguese law to describe ownership” and did not involve “separate consideration . . . as Portuguese law requires”); see also id. ¶ 69 (recognizing that “a court must resolve ambiguity in a copyright license agreement”); id. ¶ 70 (“[I]n view of the Portuguese copyright law provisions applicable to the 2010 Agreement as per Clause 14[,] the only plausible and reasonable reading of Clause 7 of the 2010 Agreement is that such clause granted AFP an exclusive license to commercialize and exploit the Leong Photographs[.]”)). Unless and until Leong proves that he owned the Leong Photographs pursuant to Clause 7 of the 2010 Agreement, the Court may never reach the question of infringement, let alone infringement that may have occurred in this District. See Kelly v. L.L. Cool J., 145 F.R.D. 32, 36 (S.D.N.Y. 1992) (explaining that copyright plaintiff must allege, inter alia, “that [the] plaintiff owns the copyrights in those works”).
Second, while it is now undisputed that Getty U.S. is a New York corporation, the first link in the alleged chain of infringement is AFP, which, Leong does not dispute, is domiciled in France. (ECF No. 52 ¶ 7). Other than through conclusory assertions (ECF No. 66 at 12), Leong has not shown that AFP's “infringing” activities took place in the United States, let alone in New York. (See id. at 12 n.6). As noted above, the fact that only one of the three Defendants is New York-domiciled means that Leong's choice of forum warrants “minor deference.” Aenergy I, 2021 WL 1998725, at *9.
Third, the fact that Leong-after the Staffer Period and years after the Stringer Period- took the step of copyright registrations in the United States for photographs none of which he contends were taken here, (see, e.g., ECF No. 52 ¶¶ 6, 26), does not create a connection to this District that weighs in favor of Leong's choice of forum. As Defendants point out, (see ECF No. 87 at 2), the Act provides that registration “is not a condition of copyright protection[,]” 17 U.S.C. § 408(a), but rather provides, inter alia, a means of public notice, and “prima facie evidence” of a copyright's validity. Id. § 410(c); see id. §§ 408(b)-(d), 412. Leong's obtaining registrations for the 2018-19 Registered Works was neither necessary, nor sufficient, for him to receive copyright protection. See 17 U.S.C. § 411 (providing that only “United States work[s]” must be registered before filing suit under the Act). As the Supreme Court has explained-and Leong argues (ECF No. 85 at 48)-“an owner's rights exist apart from registration,” and arise “immediately upon the work's creation[.]” Fourth Est. Pub. Ben. Corp. v. Wall-Street.com, LLC, 139 S.Ct. 881, 888 (2019) (citing 17 U.S.C. §§ 106, 408(a)). Leong acknowledges that the Act makes it easier for him to litigate his ownership claims by providing him with a presumption of validity and “shift[ing] the burden of proof to Defendants[.]” (ECF No. 89 at 2). Thus, Leong's after-the-fact registrations of the 2018-19 Registered Works, rather than providing a reason to defer to his choice of this forum, serve as more evidence of forum shopping. See In re Rezulin Prods. Liab. Litig., 214 F.Supp.2d 396, 400 (S.D.N.Y. 2002) (finding that plaintiff's invocation of more favorable U.S. law provisions “underscore[d] the fact that plaintiff's suit here is the product of forum shopping”); see also Iragorri, 274 F.3d at 72 (explaining that, “the more it appears the plaintiff's choice of a U.S. forum was motivated by forum-shopping reasons . . . the less deference the plaintiff's choice commands”).
Leong's fourth argument why his choice of forum deserves great deference is the least availing and reinforces the conclusion that his choice deserves minimal deference. In a footnote, Leong admits that he sued in the United States “because [he] engaged U.S. counsel on contingency and cannot fund similar litigation in Portugal[,]” where, he contends, “contingency litigation is unlawful[.]” (ECF No. 66 at 14 n.7 (“Plaintiff brought this suit in the U.S. because it was actually possible to do so; in Portugal, it is not.”)). Leong has submitted various Portuguese legal opinions that contingency litigation is unavailable in Portugal. (See ECF Nos. 59 ¶ 10; 60 ¶ 8). The availability of contingency litigation is a red herring, however, because, as a point of fact, Leong did bring virtually the same dispute in Portugal-the Second Portuguese Proceeding (compare ECF No. 40-8 with ECF No. 52)-litigated the merits for more than two years, and, on the eve of trial, chose to voluntarily dismiss it to avoid a stay of this action. (ECF No. 85 at 34 (“Plaintiff withdrew that case [i.e., the Second Portuguese Proceeding] because it was the subject of a motion to stay.”)). His own actions and admissions undermine his assertion that it was not “actually possible” to bring this suit in Portugal. (ECF No. 66 at 14 n.7; see ECF No. 85 at 16, 66). While the Getty Defendants were not parties to the Second Portuguese Proceeding, had Leong obtained a favorable decision that he owned the Leong Photographs in that case, it would have supported the grounds on which he now claims the Getty Defendants infringed. Instead, without any credible explanation, Leong forfeited his right to a trial in a Portuguese court that could have resolved the fundamental issues of ownership under Portuguese law on which his claims in this action are based, in favor of a suit in a foreign forum where only one of the three Defendants is at home.
In any event, the Second Circuit has recognized that “the unavailability of contingent fee arrangements in” an alternative forum “is of little weight” in evaluating the adequacy of that forum when, as here, the dispute has little to do with the United States. Murray v. Brit. Broad. Corp., 81 F.3d 287, 294 (2d Cir. 1996) (“The decision to permit contingent fee arrangements was not designed to suck foreign parties disputing foreign claims over foreign events into American courts.”). Leong describes no trouble in engaging Portuguese counsel to represent him in either the First or Second Portuguese Proceedings, belying his claim that he is financially unable to assert his rights in Portugal. Leong's own statements and actions demonstrate that his choice of forum here is “driven by forum shopping[,]” particularly given the attenuated connections to this District and obvious connections to Portugal, where litigation over ownership of the Leong Photographs has already ensued. Aenergy I, 2021 WL 1998725, at *12.
Accordingly, after considering the “totality of [the] circumstances,” the Court affords minimal deference to Leong's choice of forum. Norex Petroleum, 416 F.3d at 157.
b. Adequate Alternative Forum
The second step in the forum non conveniens analysis is whether an “adequate alternative forum” exists in which Paulo could pursue his claims. Iragorri, 274 F.3d at 73; see Aenergy I, 2021 WL 1998725, at *12. “An adequate alternative forum exists if (1) ‘the defendants are amen[]able to service of process there' and (2) the alternative forum ‘permits litigation of the subject matter of the dispute.'” Aenergy I, 2021 WL 1998725, at *12 (quoting Pollux, 329 F.3d at 75). Defendants “bear[] the burden of demonstrating that an adequate alternative forum exists.” Bohn v. Bartels, 620 F.Supp.2d 418, 430 (S.D.N.Y. 2007) (citing Bank of Credit & Com. Int'l (Overseas) Ltd. v. State Bank of Pak., 273 F.3d 241, 248 (2d Cir. 2001)).
Defendants argue that Portuguese courts provide an adequate alternative forum for Paulo's claims. (ECF Nos. 54 at 15-18; 70 at 7-8). As to the first factor, Defendants have consented to jurisdiction in Portugal, and agreed to accept service, waive any statute of limitations defenses, and refrain from arguing that Leong is precluded from filing an action alleging that Clause 7 was a license that he rescinded. (ECF Nos. 55 ¶ 14; 66 at 15; 85 at 61; 87 at 2). “An agreement by the defendant to submit to the jurisdiction of the foreign forum can generally satisfy the alternative forum requirement.” Aguinda v. Texaco, Inc., 303 F.3d 470, 477 (2d Cir. 2002) (internal alterations omitted). Thus, “the first element of the alternative forum test is satisfied.” Aenergy I, 2021 WL 1998725, at *12 (noting defendants' consent to service in alternative forum); see Owens, 2021 WL 638975, at *5 (finding that defendant's agreement to accept service and consent to jurisdiction met alternative forum requirement); Palacios v. The Coca-Cola Co., 757 F.Supp.2d 347, 355 (S.D.N.Y. 2010) (same), aff'd, 499 Fed.Appx. 54 (2d Cir. 2012); see also Türedi v. Coca-Cola Co., 343 Fed.Appx. 623, 626 (2d Cir. 2009) (same) (“Türedi II”).
As to the second factor, the Court must assess whether a Portuguese forum would “permit[] litigation of the subject matter of the dispute.” Pollux, 329 F.3d at 75. “The availability of an adequate alternate forum does not depend on the existence of the identical cause[s] of action in the other forum.” PT United Can Co. v. Crown Cork & Seal Co., 138 F.3d 65, 74 (2d Cir. 1998). Rather, the foreign court is adequate if it is able “to litigate the essential subject matter of the dispute.” Palacios, 757 F.Supp.2d at 357. As long as some of the plaintiff's claims could be brought in the foreign court, see BFI Grp. Divino Corp. v. JSC Russian Aluminum, 298 Fed.Appx. 87, 91-92 (2d Cir. 2008), the Court may conclude that “the forum permits litigation of the subject matter of the dispute.” Monegasque De Reassurances, 311 F.3d at 499 (citing Piper Aircraft, 454 U.S. at 254).
Leong has filed two lawsuits against AFP in Portugal, one of which resolved in a favorable settlement, the second of which involved the same ownership claims that he asserts in this action and voluntarily dismissed once Defendants sought a stay here. (See §§ II.B, III.A.2.b, supra). The fact that Leong has chosen Portuguese courts not once but twice undermines Leong's assertion that Portugal is not an adequate alternative forum. See Aenergy I, 2021 WL 1998725, at *15 (finding that “the fact that Plaintiffs have sought relief in [alternative foreign forum] cuts against Plaintiffs' claims that [it was] an inconvenient forum”); Bohn, 620 F.Supp.2d at 430 (finding Portugal an adequate alternative forum where plaintiff had filed “an action [] against the same parties for the same claims” in Portuguese court); Base Metal Trading, 253 F.Supp.2d at 707 (finding Russia to be adequate alternative forum where, inter alia, plaintiff “pursued relief in the Russian courts until the results were not to their liking”).
In addition, in support of the Motion, Defendants have submitted declarations from two Portuguese law experts, Rui Valente, a partner at Garrigues Portugal (“Mr. Valente”), and Prof. Dr. Dário Moura Vicente, a Professor of Law at the University of Lisbon (“Prof. Vicente”). (ECF Nos. 56; 72-1). Mr. Valente opines that “there is no legal obstacle that prevents Portuguese courts from having international jurisdiction to consider the claims and issues and matters which Mr. Leong is now attempting to raise in the United States.” (ECF No. 56 ¶ 29). Mr. Valente notes that “Portugal has dedicated Intellectual Property Courts, and, as Plaintiff himself has already experienced, even Portuguese Labor Courts have been held competent to adjudicate copyright issues when they are linked to an employment contract.” (Id. ¶ 30). Mr. Valente reports that both the Portuguese Intellectual Property and Labor Courts “have the power to award damages and issue injunctive and declaratory relief, including enjoining defendants from engaging in further infringement if judicially successful.” (Id.) Prof. Vicente opines that, under the Regulation, Leong can only sue AFP in Paris or in Lisbon, which was the location where he “habitually carried out his work pursuant to Clause 2(a) of the 2010 Agreement and whose courts were chosen by the Parties in Clause 15[,]” which remains “valid and enforceable[.]” (ECF No. 72-1 ¶¶ 43-44; see id. ¶ 45 (“No other courts are competent, under the Regulation, to decide claims ensuing from the 2010 Agreement.”)). Prof. Vicente notes that Leong has admitted that “whether copyright infringement has occurred depends on the nature and validity of Clause 7 of the 2010 Agreement[.]” (Id. ¶ 48). Thus, since “[t]he court having jurisdiction over the contractual issues in dispute should therefore also have jurisdiction over those relating to the alleged breach of copyright[,]” and “the Parties have chosen a Portuguese court to decide their contractual issues, the same court should also be deemed competent, under the . . . Regulation, to decide the [copyright] claim[.]” (Id. ¶¶ 52-53). Defendants have made a substantial showing that Portuguese courts provide an adequate alternative forum.
According to the official translation of the 2010 Agreement provided by Defendants, Clause 2(a) provides that “The usual workplace will be at the AFP's newsroom in Lisbon, and the Employee hereby undertakes to accept such business-related travel as may be required by AFP, either to Portugal or abroad, which travels may not be deemed to constitute external service.” (ECF No. 56-1 at 4 ¶ 2(a)).
Defendants' showing stands in contrast to the record in Amimon Inc. v. Shenzhen Hollyland Tech Co., (see ECF No. 89 at 3), where, unlike here, plaintiff's choice of forum warranted greater deference, and the defendants failed to show that they were all amenable to service of process in China or that any other adequate forum existed. No. 20 Civ. 9170 (ER), 2021 WL 5605258, at *6-8 (S.D.N.Y. Nov. 30, 2021).
With his Opposition, Leong also submits declarations from Portuguese lawyers, Alberto De Sá e Mello, Paulo Alves dos Santos, and José Alberto Vieira (“Mr. Vieira”). (ECF Nos. 59; 60; 62). All three Portuguese lawyers opine that contingency fee litigation “is unlawful in Portugal” and that “Leong would not be able to pursue copyright litigation in Portugal under a contingency arrangement . . . with Portuguese counsel.” (ECF No. 60 ¶ 8; see ECF Nos. 59 ¶ 10; 62 ¶ 20). Mr. Vieira opines that a Portuguese court “cannot” apply “U.S. copyright laws” and “will conclude that it does not have competence to adjudicate [] Leong's claims[.]” (ECF No. 62 ¶ 16). Mr. Vieira acknowledges that “Portuguese copyright registrations entitle the owner of the registration to a presumption that they are the owner of the copyrighted work[,]” but “Leong does not own any copyright registrations in Portugal, and a Portuguese court will not presume Leong's ownership of those works based on his ownership of U.S. copyright registrations.” (Id. ¶ 25). “As a result, Leong must separately prove ownership of each of his approximate[ly] 34,500 photographs, which is extremely burdensome in a Portuguese infringement proceeding.” (Id. ¶ 26).
The Court is not persuaded. Leong's arguments that Portuguese law “does not contain provisions allowing causes of action[] or remedies precisely equivalent to those []he asserts in th[is] [] action is [] insufficient to bar a finding that an adequate forum exists.” Do Rosário Veiga v. World Meteor. Org., 486 F.Supp.2d 297, 304-05 (S.D.N.Y. 2007). (See ECF No. 66 at 15-16). The Supreme Court rejected this very argument in Piper Aircraft, explaining that “[t]he possibility of a change in substantive law should ordinarily not be given conclusive or even substantial weight in the forum non conveniens inquiry.” 454 U.S. at 247. Indeed, none of the Portuguese legal opinions Leong has submitted opine that a copyright claim does not exist under Portuguese law; rather, each of the distinctions they raise concern procedural matters-such as how Leong would prove ownership (see ECF No. 62 ¶ 26) and what type of fee arrangements are permitted (see ECF Nos. 59 ¶ 10; see also id. 60 ¶ 10)-and do not undermine Defendants' showing that Portuguese courts provide an adequate forum for Leong's copyright infringement claims. Indeed, in the FAC Leong acknowledges the similarities between the analysis of copyrights under U.S. and Portuguese law, further undermining his current protestations. (ECF No. 52 at 14 n.4 (alleging that the “right to communicate to the public” under the Portuguese Statute is “roughly analogous to the ‘public display' right under U.S. copyright law”)). As the Second Circuit has recognized, “[t]he availability of an adequate alternative forum does not depend on the existence of the identical cause of action in the other forum, nor on identical remedies.” Norex Petroleum, 416 F.3d at 158; Value Ptrs. S.A. v. Bain & Co., No. 98 Civ. 336648 (SAS), 1998 WL 336648, at *3 (S.D.N.Y. June 22, 1998) (finding that alternative forum was adequate where it recognized analogous, but not “identical,” causes of action). “Nor does the prospect of a lesser recovery . . . justify refusing to dismiss on the ground of forum non conveniens, provided that the essential subject matter of the dispute can be adequately addressed by the foreign court. Aenergy II, 31 F.4th at 130-31; see PT United, 138 F.3d at 74 (finding that non-existence of RICO claim in alternative forum did not render it inadequate); Owens, 2021 WL 638975, at *5 (finding that alternative forum provided “several means by which the plaintiffs may recover from [defendant] under Turkish law for the conduct alleged in the complaint[,]” even if not identical to mechanisms available under United States law); Türedi v. Coca-Cola Co., 460 F.Supp.2d 507, 524 (S.D.N.Y. 2006) (finding alternative forum was adequate where it provided “various substantive provisions and procedures under which Plaintiffs can pursue claims and obtain remedies for the forms of misconduct [they] allege against Defendants”) (“Türedi I”), aff'd, Türedi II, 343 Fed.Appx. 623. At a minimum, Defendants have shown that Portugal “permits litigation of the subject matter of the dispute[,]” which is sufficient under Second Circuit precedent. Monegasque De Reassurances, 311 F.3d at 499.
Finally, the fact that Leong initially looked to a Portuguese court to assert his claims based on the interpretation of Clause 7-which he specifically carved out of the Settlement Agreement in the First Portuguese Proceeding-reinforces the adequacy of Portuguese courts as an alternative forum. Leong's willingness to invoke the jurisdiction of Portuguese courts not once, but twice, undermines the arguments he now makes about their supposed inadequacy as an alternative forum. See Aenergy I, 2021 WL 1998725, at *15. Although Leong now contends that the Dismissal Order precludes him from bringing another action in Portuguese courts (ECF Nos. 66 at 18-19; 85 at 40), the parties cannot even agree on the correct translation of the Dismissal Order, (see § II.A.2.b n.4, supra), let alone its significance as a matter of Portuguese law, and Defendants have agreed not to oppose Leong's assertion of the licensing theory in a Portuguese court. (ECF Nos. 70 at 8 (Defendants acknowledging that Leong “is not precluded from filing a copyright infringement suit under the new theory he has pivoted to in his FAC, which is that Clause 7 is allegedly a license that he has rescinded”); 85 at 61-62 (“We will not challenge that theory as precluded in Portugal.”); 87-1 at 2-4). Leong has not demonstrated, at this stage, that the Lisbon District Court, the forum to which he agreed in Clause 15, could not adjudicate this dispute, which his own pleading predicates on Portuguese law, and which Defendants have agreed to litigate in Portugal.
In sum, the Court concludes that this action does not provide an example of one of the “‘rare circumstances' where the remedies afforded by a foreign forum can be said to be inadequate[,]” and finds that the Portuguese courts will provide an adequate alternative forum for the claims that Leong asserts in the FAC. Aenergy II, 31 F.4th at 131 (quoting Aenergy I, 2021 WL 1998725, at *13); see Iragorri, 274 F.3d at 73.
c. Balancing Private and Public Interests
Because Paulo's choice of this forum is entitled to minimal deference, and Portugal offers an adequate alternative forum for this dispute, the Court turns to the third and final step of the forum non conveniens analysis: weighing the private and public interest factors set forth in Gulf Oil Corp. v. Gilbert. 330 U.S. 501 (1947); see Aenergy II, 31 F.4th at 132-33; Pollux, 329 F.3d at 74-75.
i. Private Interest Factors
The private interest factors the Court considers are: “(a) the ease of access to evidence; (b) the availability of compulsory process; (c) the cost for cooperative witnesses to attend trial; (d) the enforceability of a judgment; and (e) all other practical matters that might shorten any trial or make it less expensive.” Do Rosário Veiga, 486 F.Supp.2d at 306 (citing Gilbert, 330 U.S. at 508); see Pollux, 329 F.3d at 74-76; Iragorri, 274 F.3d at 73-74. “The private factor analysis essentially calls for a court to compare ‘the hardships [the] defendant would suffer through the retention of jurisdiction and the hardships the plaintiff would suffer as the result of dismissal and the obligation to bring suit in another country.'” Aenergy II, 2021 WL 1998725, at *16 (quoting Iragorri, 274 F.3d at 74); see Bohn, 620 F.Supp.2d at 431.
The Court finds that the private interest factors weigh in favor of litigating this case in Portugal. Leong is a Portuguese photographer based out of AFP's Lisbon Bureau who entered into an employment agreement the interpretation of which is governed by Portuguese law and which designated Portuguese courts as the exclusive forum for disputes concerning its provisions. (ECF Nos. 52 ¶¶ 6, 27, 86; 56-1 ¶¶ 2(a), 14-15). The Leong Photographs were taken in Portugal as well as more than a dozen other locations around the world, but not in the United States. (ECF No. 58 ¶ 4). Importantly, Leong provided, in the Second Portuguese Proceeding, a list of ten witnesses with knowledge of the dispute concerning the validity of Clause 7, all of whom resided in Portugal as of December 2019. (See ECF Nos. 40-8 at 24; 71 ¶ 30). The two witnesses Leong has identified in this case both lived and worked in Spain, but had oversight of AFP's operations in Portugal. (ECF No. 58 ¶¶ 6-8). In addition, the FAC's reliance on the interpretation of the 2010 Agreement, in particular Clause 7, will necessarily turn on “the parties' contractual intent,” which will require testimony of non-United States witnesses. Murray, 81 F.3d at 295. The fact that any trial of Leong's claims will require the testimony of many Portuguese-or French or Spanish- witnesses, but few New York witnesses, “weigh[s] heavily in favor” of Defendants. Id. Leong points to the New York incorporation of Getty U.S. and, based on his counsel's analysis of LinkedIn profiles, posits that some of the Downstream Infringers' witnesses are more likely to be New York-based. (ECF Nos. 63 ¶¶ 5-13; 66 at 20-21). As Leong admits, however, Getty U.S. maintained its headquarters in Seattle, so the greater likelihood is that its communications with AFP would be located there, or in Paris. (ECF No. 52 ¶¶ 7-8).
In addition, as Defendants' Portuguese expert, Mr. Valente, acknowledges-and Leong's experts do not contest-“a Portuguese Court could not compel foreign witnesses to appear and testify,” but adds that “this is not a unique feature of Portuguese jurisdiction[]” such that “the same issue would exist as to compelling foreign witnesses living abroad to appear.” (ECF No. 71 ¶ 29). Leong has not explained how this Court has any greater ability than a Portuguese court to compel any unwilling foreign witnesses to appear in this District . See Aenregy I, 2021 WL 1998725, at *17 (finding that because “documents and witnesses are likely beyond the reach of the Court's power to compel production . . . also weighs in favor of dismissal”); Bohn, 620 F.Supp.2d at 432 (“Compulsory process is unavailable in this forum for attendance of most, if not all, unwilling witnesses in this matter.”). Thus, in a case such as this where witnesses “are scattered across the globe,” trying the case in this District “likely will be inconvenient and costly for those involved.” Bohn, 620 F.Supp.2d at 431.
Similarly, as is evidenced by the parties' submissions, many documents, as well as witness testimony, will need to be translated from Portuguese (or Spanish or French), which will not make trying the case in this District “easy, expeditious[,] and inexpensive.” Iragorri, 274 F.3d at 74. “The fact that many relevant documents and potential witness testimony would be in Portuguese and thus would require translation weighs ‘strongly in favor' of dismissal on forum non conveniens grounds.” Aenergy I, 2021 WL 1998725, at *18 (collecting cases finding that private interest factors favored dismissal where many documents and witnesses' testimony were in foreign language and would need to be translated). The parties' heated disputes about the accuracy of each other's translation of key Portuguese documents at this early stage of the case (see § II.A.2.b n.4, supra), demonstrates that the “ordeal” of translating documents in this case “would be a costly, difficult endeavor.” Aenergy I, 2021 WL 1998725, at *18; see Overseas Media, Inc. v. Skvortsov, 441 F.Supp.2d 610, 618-19 (S.D.N.Y. 2006) (finding that “the language barrier[,]” which became apparent through an “erroneous translation[,]” was a private interest factor weighing in favor of dismissal), aff'd, 277 Fed.Appx. 92 (2d Cir. 2008). These cost considerations are a “legitimate part of the forum non conveniens analysis[.]” Palacios, 757 F.Supp.2d at 362.
See also ECF Nos. 39 (Defendants arguing that Leong's translation of the Dismissal Order as “inaccurate and potentially fraudulent”); 54 at 19 n.11 (referencing Leong's “inaccurate translation”); 66 at 18-19 n.11 (Leong objecting to Defendants' characterization of his translation as fraudulent and criticizing their translation).
As to the enforceability of a judgment, Leong contends that a judgment here would be “far superior” (ECF No. 62 ¶ 23) and “more meaningful[.]” (ECF No. 66 at 22 (quoting Peregrine Myanmar Ltd. v. Segal, 89 F.3d 41, 47 (2d Cir. 1996)). While Leong speculates that a United States court might not enforce a Portuguese copyright infringement judgment on “First Amendment grounds[,]” (ECF No. 66 at 22), the decision on which he relies, Sarl Louis Feraud International v. Viewfinder, Inc., addressed whether French copyright infringement judgments “were unenforceable under New York law[,]” and the Second Circuit observed that the availability of a fair use defense to copyright infringement “does not render” a news publication “immune from liability under intellectual property laws.” 489 F.3d 474, 479-80 (2d Cir. 2007). Of course, “[t]he applicability of the fair use defense is a mixed question of law and fact” that cannot be resolved unless there is no “genuine dispute of material fact with respect to the defense.” FireSabre Consulting LLC v. Sheehy, No. 11 Civ. 4719 (CS), 2013 WL 5420977, at *9 (S.D.N.Y. Sept. 26, 2013). The enforceability of any Portuguese judgment in the United States would thus be subject to “the two-step analysis courts apply in deciding whether foreign libel judgments are repugnant to public policy: (1) identifying the protections deemed constitutionally mandatory for the defamatory speech at issue, and (2) determining whether the foreign libel laws provide comparable protection.” Sarl Louis, 489 F.3d at 481. Leong points to no instance in which a United States court has refused to enforce a Portuguese decision of any kind, let alone one involving copyright infringement, demonstrating that this is, at a minimum, an open question and he would not be precluded from seeking to enforce such a judgment here.
Finally, another practical consideration arises from the Court's conclusion below (see § III.B, infra), that the exercise of personal jurisdiction over AFP would not be reasonable. See Bohn, 620 F.Supp.2d at 432 (finding that lack of personal jurisdiction over defendant weighed in favor of alternative forum where jurisdiction did exist). The Court finds that “it would be more practical and less expensive to try one case against all defendants in Portugal as opposed to proceeding with parallel actions in New York and Portugal.” Id.
Leong also asks the Court to take into account the fact that he “is financially unable to litigate this case unless on contingency[,]” while “Defendants are multinational corporations with the financial means to litigate in New York.” (ECF No. 66 at 22). For the reasons discussed above concerning the minimal deference afforded his choice of forum, the Court finds this argument similarly unpersuasive in tipping the balance of the private interest factors. (See § III.A.2.a, supra).
Accordingly, although some witnesses may be New York-based-for Getty U.S. and some of the non-party Downstream Infringers-the Court finds that the balance of the private interest factors tips in favor of dismissal.
ii. Public Interest Factors
The public interest factors the Court considers include: “administrative difficulties associated with court congestion; the unfairness of imposing jury duty on a community with no relation to the litigation; the interest in having localized controversies decided at home; and avoiding difficult problems in conflict of laws and the application of foreign law.” Aguinda, 303 F.3d at 480; see Gilbert, 330 U.S. at 508-09; Iragorri, 274 F.3d at 74.
The first factor here is neutral, given the absence of any indication that Portuguese courts “are more or less congested than this District,” and Leong's withdrawal of his right to a trial in the Second Portuguese Proceeding. Aenergy I, 2021 WL 1998725, at *19; see Do Rosário Veiga, 486 F.Supp.2d at 307 (finding first public interest factor neutral absent “indication that courts in [] Switzerland are any more congested than the busy courts in this district”). The remaining factors collectively weigh in favor of dismissal.
First, “the interest in having localized controversies decided at home,” Aguinda, 303 F.3d at 480, “strongly suggests” that a Portuguese forum should hear Leong's claims. Aenergy I, 2021 WL 1998725, at *19. This case has little to do with New York and a lot to do with Portugal. At the core of this case are the ownership rights of a Portuguese photographer, under Portuguese law, with respect to photographs that he took in Portugal and around the world-but not in the United States. (ECF No. 58 ¶ 4). It is true that Getty U.S. is a New York domiciliary and AFP has a New York office-which may or may not have had anything to do with AFP and the Leong Photographs-and some of the Downstream Infringers have New York offices-which also may or may not have anything to do with AFP and Getty US. Whatever interest New York may have in the alleged infringing conduct of these entities, however, the Court finds that it is outweighed by the interest of Portugal in adjudicating a dispute that centers on the protection of the copyrights of its photographers. See Aenergy I, 2021 WL 1998725, at *19; Do Rosário Veiga, 486 F.Supp.2d at 308 (finding that public interest factors weighed in favor of dismissal where “the links of [the] action with this district are minimal compared with the contacts of the controversy with Switzerland, and that the central dispute concerns Switzerland more than the United States”); Türedi I, 460 F.Supp.2d at 528 (finding that “United States' interest in adjudicating alleged violations of international law . . . as well as charges of corporate misconduct occurring in the United States and involving large American businesses” was outweighed by Turkey's interest in resolving violations of Turkish and international law); Value Ptrs., 1998 WL 336648, at *5 (finding that Brazil had “substantial interest in adjudicating a dispute” where “the most important event alleged” took place in Brazil).
Second, as both parties agree, the core of Leong's claims, his ownership of the Leong Photographs and whether AFP had an assignment or a license under the 2010 Agreement, will require application of principles of Portuguese law. (ECF Nos. 87 at 3; 89 at 2). See Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82, 90 (2d Cir. 1998) (“Since the works at issue were created by Russian nationals and first published in Russia, Russian law is the appropriate source of law to determine issues of ownership of rights.”); Van Cleef & Arpels Logistics, S.A. v. Landau Jewelry, 583 F.Supp.2d 461, 463 (S.D.N.Y. 2008) (“When determining the initial owner of a copyright, a court must look to the law of the country in which the work originated.”). Indeed, just in connection with the Motion the parties have presented no less than six opinions from Portuguese experts who heartily disagree on many basic principles applicable to Leong's claims. (ECF Nos. 56; 59; 60; 62; 71; 72). Portuguese courts are therefore the “forum familiar with the law governing the case” and best able to sort through any actual disparities in the applicable Portuguese law. Do Rosário Veiga, 486 F.Supp.2d at 307; see Pollux, 329 F.3d at 76 (finding that applicability of English law to plaintiffs' claims “strongly tipped in favor of litigation in England”); Owens, 2021 WL 638975, at *6 (finding that choice of law dispute and “potential application of Turkish substantive law” weighed in favor of dismissal); Value Ptrs., 1998 WL 336648, at *5 (finding that applicability of Brazilian law “weigh[ed] heavily in favor of dismissal”). Despite the federal courts' aptitude in applying foreign law as needed, “the doctrine of forum non conveniens ‘is designed in part to help courts avoid conducting complex exercises in comparative law.'” Aenergy I, 2021 WL 1998725, at *20 (quoting Piper Aircraft, 454 U.S. at 251).
A Portuguese photographer who worked in Portugal and entered into an employment agreement that designated Portuguese law and a Portuguese court for resolution of all disputes with his employer including those involving his rights in the photographs while he took on assignment in Portugal and around the world-but not in the United States-“surely cannot be surprised” that he must litigate claims concerning his ownership of his photographs in Portugal. Aenergy I, 2021 WL 1998725, at *20. The Court has afforded minimal deference to his choice of forum, and finds that Portugal provides an adequate alternative forum. In addition, although some of the private interest factors tip in his favor, the overall balance of the private and public interest factors weighs in favor of dismissal. Accordingly, I respectfully recommend that dismissal based on forum non conveniens is warranted.
To ensure that Leong's claims are heard on the merits in Portugal, however, conditional dismissal is proper. See Aenergy I, 2021 WL 1998725, at *20; Owens, 2021 WL 638975, at *6. I recommend, however, that dismissal be conditioned on Defendants' agreement to: (1) accept service in Portugal; (2) submit to the jurisdiction of the Lisbon District Court's Labour and/or Intellectual Property Divisions; (3) waive any statute of limitations defense that may have arisen since the filing of this action; (4) toll the statute of limitations as to Leong's claims under the Act and permit Leong to move to reopen this action and reassert those claims in the event that the Portuguese court were to decline to hear such claims; and (5) agree that Leong is not precluded from arguing that Clause 7 created a license that he rescinded. See Aenergy I, 2021 WL 1998725, at *20 (directing parties to submit agreement to litigate in alternative forum in accordance with court's conditions); Owens, 2021 WL 638975, at *6 (same); Value Ptrs., 1998 WL 336648, at *5 (including condition that “plaintiff may move in this court to restore this action” if Brazilian court refused to exercise jurisdiction).
Defendants have agreed to enter “a tolling arrangement for U.S. infringement claims and not [to] attempt to relitigate ownership if that issue is finally resolved in Portugal but [Leong] is unable to redress U.S. infringement there.” (ECF No. 70 at 9).
Defendants advance as a separate argument for dismissal that the forum selection clause in Clause 15 requires Leong to litigate the claim in the FAC in a Portuguese court. (ECF Nos. 54 at 27-30; 70 at 13-14). As Leong correctly points out, however, the Supreme Court has explained that a forum selection clause such as Clause 15-even if presumptively valid-does not provide an independent basis for dismissal, but rather, is appropriately enforced “through the doctrine of forum non conveniens[,]” as the Court has done here. (ECF No. 66 at 31-32 (quoting Atl. Marine Const., 571 U.S. at 60)).
B. Personal Jurisdiction Over AFP
In the alternative, Defendants argue that AFP that it is not subject to general personal jurisdiction in New York, New York's long-arm statute does not authorize specific jurisdiction, and the exercise of jurisdiction would offend due process. (ECF Nos. 54 at 21-31; 70 at 14 n.20). Leong argues that because his claims arise from AFP's New York activities “with and through the Getty Defendants,” New York's long-arm statute authorizes specific personal jurisdiction over AFP, and that doing so comports with due process. (ECF No. 66 at 25-32).
At oral argument, Leong's counsel conceded that his arguments focus on specific, not general, jurisdiction over AFP. (ECF No. 85 at 54-55).
In a footnote in the Opposition, and again at oral argument, Leong contended that AFP waived any challenge to personal jurisdiction. (ECF No. 66 at 10 n.3; see 85 at 52). Setting aside the fact that a substantive argument that appears only in a footnote is not properly raised, see Weslowski v. Zugibe, 96 F.Supp.3d 308, 314 (S.D.N.Y. 2015), this argument lacks merit because Defendants preserved in the Motion to Stay, “any potentially applicable defenses or other arguments as to why [Leong]'s claims fail[.]” (ECF No. 29 at 5 n.1). Significantly, the Motion to Stay was not a motion under Federal Rule of Civil Procedure 12, the Court denied the Motion to Stay as moot (ECF No. 45), and AFP's defense was timely raised in the Motion. See Flex Mktg. Grp., LLC v. Lapin, No. 22 Civ. 6179 (AT) (GWG), 2022 WL 16598585, at *4 (S.D.N.Y. Nov. 2, 2022) (finding no waiver in light of minimal pretrial activity); In re Helicopter Crash Near Wendle Creek, Brit. Columbia on Aug. 8, 2002, 485 F.Supp.2d 47, 52 (D. Conn. 2007) (noting that, “[i]n most cases where courts have found waiver, the defendant has waited multiple years after its answer to file a motion to dismiss”).
Because AFP has not waived or forfeited the defense of lack of personal jurisdiction, the Court must evaluate whether Leong has adequately demonstrated a prima facie basis for the Court to exercise specific personal jurisdiction over AFP.
1. Legal Standard
“A plaintiff bears the burden of demonstrating personal jurisdiction over a person or entity against whom it seeks to bring suit.” Penguin Grp. (USA) Inc. v. Am. Buddha, 609 F.3d 30, 34 (2d Cir. 2010). Federal Rule of Civil Procedure 12(b)(2) governs motions to dismiss based on lack of personal jurisdiction over a defendant. See Rudersdal, EEOD v. Harris, No. 18 Civ. 11702 (GHW), 2020 WL 5836517, at *4 (S.D.N.Y. Sept. 30, 2020). “On a [Rule] 12(b)(2) motion to dismiss for lack of personal jurisdiction, plaintiff bears the burden of showing that the court has jurisdiction over the defendant.” In re Magnetic Audiotape Antitrust Litig., 334 F.3d 204, 206 (2d Cir. 2003); see Aero AG Holdings, LLC v. Huggoes Fashion LLC, No. 21 Civ. 9499 (VEC) (SLC), 2022 WL 6244439, at *6 (S.D.N.Y. July 5, 2022), adopted as modified, 2022 WL 4463896 (S.D.N.Y. Sept. 26, 2022). To survive dismissal at the pleading stage and before discovery, “a plaintiff must make a prima facie showing that jurisdiction exists.” Eades v. Kennedy, PC L. Offs., 799 F.3d 161, 167-68 (2d Cir. 2015); see Aero AG, 2022 WL 6244439, at *6; Krisko v. Marvel Ent., LLC, 473 F.Supp.3d 288, 297 (S.D.N.Y. 2020). If a court considers only pleadings and affidavits submitted in connection with a Rule 12(b)(2) motion, the plaintiff's prima facie showing “must include an averment of facts that, if credited by the ultimate trier of fact, would suffice to establish jurisdiction over the defendant.” In re Terrorist Attacks on Sept. 11, 2001, 714 F.3d 659, 673 (2d Cir. 2013); see Chloé v. Queen Bee of Beverly Hills, LLC, 616 F.3d 158, 163 (2d Cir. 2010).
In deciding a Rule 12(b)(2) motion to dismiss for lack of personal jurisdiction, the Court may rely on materials outside the pleadings.” See DiStefano v. Carozzi N. Am., Inc., 286 F.3d 81, 84 (2d Cir. 2001); DoubleLine Cap. LP v. Construtora Norberto Odebrecht, S.A., 413 F.Supp.3d 187, 216 (S.D.N.Y. 2019) (“Courts may rely on materials outside the pleading in considering a motion to dismiss for lack of personal jurisdiction.”). The Court accepts “[t]he allegations in the complaint . . . as true to the extent they are uncontroverted by the defendant's affidavits.” MacDermid, Inc. v. Deiter, 702 F.3d 725, 727 (2d Cir. 2012); see Seetransport Wiking Trader Schiffarhtsgesellschaft MBH & Co., Kommanditgesellschaft v. Navimpex Centrala Navala, 989 F.2d 572, 580 (2d Cir. 1993). Where the parties' affidavits conflict, “all factual disputes are resolved in the plaintiff's favor, and the plaintiff's prima facie showing is sufficient notwithstanding the contrary presentation by the moving party.” Seetransport, 989 F.2d at 580. “In determining whether a plaintiff has met this burden, [a court] will not draw argumentative inferences in the plaintiff's favor, nor must [the court] accept as true a legal conclusion couched as a factual allegation.” In re Terrorist Attacks, 714 F.3d at 673.
“Personal jurisdiction may be either general or specific.” Al-Ahmed v. Twitter, Inc., 553 F.Supp.3d 118, 124 (S.D.N.Y. 2021) (citing Brown v. Lockheed Martin Corp., 814 F.3d 619, 624 (2d Cir. 2016)); see Rudersdal, EEOD, 2020 WL 5836517, at *4. “General, or ‘all-purpose,' jurisdiction allows a court to adjudicate any cause of action against the defendant, regardless of where it arose.” Al-Ahmed, 553 F.Supp.3d at 124-25. A court “may assert general jurisdiction over a foreign defendant . . . only when the defendant's affiliations with the State in which suit is brought ‘are so constant and pervasive as to render [it] essentially at home in the forum State.'” Waldman v. Palestinian Liberation Org., 835 F.3d 317, 331 (2d Cir. 2016) (quoting Daimler, 571 U.S. at 127). Specific jurisdiction is limited to claims that “arise[] out of or relate[s] to the defendant's contacts with the forum.” Daimler, 571 U.S. at 127; see Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414 n.8 (1984). Specific jurisdiction “‘depends on an affiliation between the forum and the underlying controversy, principally, activity or an occurrence that takes place in the forum State and is therefore subject to the State's regulation.'” Waldman, 835 F.3d at 331 (quoting Goodyear, 564 U.S. at 919).
In “resolving issues of personal jurisdiction” in a case involving federal question jurisdiction such as this, the Court “must . . . engage in a two-part analysis.” Bank Brussels Lambert v. Fiddler Gonzalez & Rodriguez, 171 F.3d 779, 784 (2d Cir. 1999). First, “[it] must determine whether there is jurisdiction over the defendant under the relevant forum state's laws[.]” Id. Second, it “must determine whether an exercise of jurisdiction under these laws is consistent with federal due process requirements.” Id.; see Aero AG, 2022 WL 6244439, at *7 (discussing two-part analysis); DoubleLine Cap., 413 F.Supp.3d at 216-17 (same).
2. Additional Factual Background From Affidavits
AFP, whose global headquarters and principal place of business is located in Paris, France, “is a news wire that licenses news content it produces to various clients including publishers of newspapers, magazines, broadcasters, digital media outlets, institutions, state bodies, and corporations for use in their publications and programs, or for internal purposes.” (ECF No. 55 ¶¶ 4-5). As part of its news wire service, AFP “offers clients a daily feed of news photographs picturing current events as well as a database of previously created news content available to clients for licensing.” (Id. ¶ 6). Since 2003, AFP has had a partnership with Getty U.S. pursuant to which “each party distributes the other party's in-house photographic editorial content in territories where the distributing party has a stronger client base.” (Id. ¶ 7). In the United States, “Getty [US] is the exclusive distributor of AFP's photographic editorial content.” (Id.) AFP's agreement with Getty U.S. is governed by New York law, but AFP negotiated and entered that agreement from its headquarters in Paris, out of which AFP manages its ongoing relationship with Getty US. (Id.)
Declaration of Christophe Walter-Petit, AFP's General Counsel, in support of the Motion. (ECF No. 55 ¶ 2).
AFP maintains an office in New York City staffed by fourteen employees “whose activities are strictly limited to news reporting.” (ECF No. 55 ¶¶ 4, 8). From its New York office, however, AFP does not: (1) license editorial photographs; (2) manage its global news wire; (3) manage the AFP Forum; or (4) manage its business relationship with Media Storehouse. (Id. ¶ 9). Rather, AFP “engages in all of this conduct from its headquarters in France.” (Id.) The servers AFP uses to operate its global news wire and host AFP Forum news content, including downloadable editorial photographs, are in France, not the United States. (Id. ¶ 10).
Aside from Portugal, Leong took the Leong Photographs in Angola, Brazil, France, Holland, Ireland, Libya, Mozambique, Poland, Russia, Sierra Leone, South Africa, Syria, Tunisia, Ukraine, and the United Kingdom. (ECF No. 58 ¶ 4). AFP has never offered licenses to the Leong Photographs, posted them online or uploaded them to the AFP Forum from, New York. (ECF No. 55 ¶ 11). AFP did not provide Media Storehouse with any Leong Photographs from New York, and never issued a “kill notice” relating to the Leong Photographs from New York. (Id.)
Declaration of Leong in opposition to the Motion. (ECF No. 58 ¶ 1).
AFP recruited and hired Leong from its office in Lisbon, Portugal. (ECF No. 55 ¶ 12). Leong was in Portugal when he negotiated and entered into the 2010 Agreement with AFP. (Id.) AFP did not employ or assign Leong to cover the news or take photographs in the United States. (Id. ¶ 12). The AFP staff members who worked with, interacted with, and gave assignments to Leong were located in Portugal, Spain, and France, and none were located in the United States. (Id. ¶ 13; ECF No. 58 ¶ 8 (stating that Gabriel Bouys, who was located and lived and worked in Spain, coordinated Leong's assignments)). AFP staff in Portugal, Spain, and France made the decision to terminate Leong, who was in Portugal when he was informed of the decision. (ECF No. 55 ¶ 13). Specifically, AFP's Madrid Bureau Chief, Patrick Rahir, “who was responsible for AFP's activities in both Portugal and Spain” and lived and worked in Spain, made the decision to terminate Leong's employment. (ECF No. 58 ¶ 6). In the Second Portuguese Proceeding, Leong provided a list of ten witnesses with knowledge of his challenge to Clause 7, all of whom resided in Portugal as of December 2019. (ECF No. 71 ¶ 30; see ECF Nos. 40-8 at 24).
Additional Declaration of Mr. Valente in support of the Motion. (ECF No. 71 ¶¶ 1-2).
At Leong's Request, the Court takes judicial notice of the following publicly available information on Defendants' websites as additional evidence of AFP's New York contacts:
(1) A February 11, 2022 press release AFP issued from New York announcing that “Getty Images” and AFP had renewed “their multi-year video partnership” (ECF No. 64-1);
(2) A February 11, 2022 press release “Getty Images” issued from New York announcing the renewal of the “multi-year video partnership” with AFP (ECF No. 64-2);
(3) An April 14, 2021 press release from AFP announcing its 2020 financial year results (ECF No. 64-3);
(4) An August 10, 2022 press release Getty Images Holdings, Inc. issued from New York reporting its financial results for the quarter ended June 30, 2022 (ECF No. 64-4); and
(5) An undated page from AFP's website recognizing as a “partner” the law firm of Higbee & Associates, which “handles copyright enforcement, including pre-litigation negotiation and litigation, for [AFP] in the United States.” (ECF No. 64-5).(ECF No. 64 (the “Websites”)).
For purposes of the Motion, the Court “may take judicial notice of information publicly announced on” the Websites, whose authenticity Defendants do not dispute and which “‘capable of accurate and ready determination.'” Doron Precision Sys., Inc. v. FAAC, Inc., 423 F.Supp.2d 173, 179 n.8 (S.D.N.Y. 2006) (quoting Fed.R.Evid. 201(b)); see Lama v. New Century Found., No. 19 Civ. 2169 (GHW) (DF), 2019 WL 7599899, at *6 (S.D.N.Y. Oct. 10, 2019) (taking judicial notice of companies' domicile as indicated on their website).
AFP will consent to jurisdiction in Portugal were Leong to bring the claims he has asserted in this action there. (ECF No. 55 ¶ 14). Leong attests that he filed this action against Defendants in the United States because he “was able to find a lawyer in the U.S. that could take [his] case on contingency[,]” and he “lack[s] the financial means to” pay copyright lawyers' hourly rates to pursue a copyright infringement case in the United States or Portugal. (ECF No. 58 ¶ 3). “Any files” Leong has “relevant to this case . . . are digital or easily digitized.” (Id. ¶ 5).
3. New York's Long-Arm Statute
Whether the Court may exercise specific jurisdiction over AFP is governed by New York's long-arm statute. See N.Y. C.P.L.R. § 302(a); see also RV Skincare Brands LLC v. Digby Invs. Ltd., 394 F.Supp.3d 376, 380 (S.D.N.Y. 2019) (citing Sunward Elecs., Inc. v. McDonald, 362 F.3d 17, 22 (2d Cir. 2004); see Chloé, 616 F.3d at 163-64 (looking first to the long-arm statute of New York, “the forum state”); Al-Ahmed, 553 F.Supp.3d at 124 (same). Leong invokes subsections (a)(1) and (a)(2), which provide:
(a) Acts which are the basis of jurisdiction. As to a cause of action arising from any of the acts enumerated in this section, a court may exercise personal jurisdiction over any non-domiciliary . . ., who in person or through an agent: 1. transacts any business within the state or contracts anywhere to supply goods or services in the state; or
2. commits a tortious act within the state . . . .N.Y. C.P.L.R §§ 302(a)(1), (2). The Court separately considers whether Leong has established a prima facie basis for personal jurisdiction over AFP under each subsection.
Leong concedes that subsection 302(a)(3), which requires an injury within New York, does not provide a basis for specific personal jurisdiction over AFP. (ECF No. 66 at 28 n.24). See N.Y. C.P.L.R. § 302(a)(3).
“Section 302(a)[(1)] has two elements: (1) the defendant must have transacted business within the state, and (2) the cause of action must arise from that business activity.” RV Skincare Brands, 394 F.Supp.3d at 381 (internal alterations omitted) (quoting Licci ex rel. Licci v. Lebanese Canadian Bank, SAL, 732 F.3d 161, 167 (2d Cir. 2013)); see Rudersdal, EEOD, 2020 WL 5836517, at *5 (quoting Sole Resort, S.A. de C.V. v. Allure Resorts Mgmt., LLC, 450 F.3d 100, 103 (2d Cir. 2006)); Berdeaux v. OneCoin Ltd., 561 F.Supp.3d 379, 399 (S.D.N.Y. 2021).
“‘A nondomiciliary transacts business under CPLR § 302(a)(1) when he purposefully avails himself of the privilege of conducting activities within New York, thus invoking the benefits and protections of its laws.'” Rudersdal, EEOD, 2020 WL 5836517, at *5 (quoting CutCo Indus., Inc. v. Naughton, 806 F.2d 361, 365 (2d Cir. 1986)). “Transacting business ‘has been interpreted to require a certain quality, rather than a specific quantity, of contacts with the forum.'” Rudersdal, EEOD, 2020 WL 5836517, at *5 (quoting U.S. Theatre Corp. v. Gunwyn/Lansburgh Ltd. P'ship, 825 F.Supp. 594, 595 (S.D.N.Y. 1993)). Purposeful availment “requires more than ‘random, fortuitous, or attenuated contacts[.]'” Wahlhuetter v. CollegeHumor.com, LLC, No. 19 Civ. 1501 (LGS) (BCM), 2021 WL 6205506, at *5 (S.D.N.Y. Nov. 29, 2021) (quoting Capitol Recs., LLC v. VideoEgg, Inc., 611 F.Supp.2d 349, 357-58 (S.D.N.Y. 2009)); see Burger King Corp. v. Rudzewicz, 471 U.S. 462, 475 (1985) (noting, in addition, that “unilateral activity of another party or a third person” is not a basis to “hale[]” a defendant into jurisdiction). “Section ‘302(a)(1) jurisdiction is proper even though the defendant never enters New York, so long as the defendant's activities here were purposeful and there is a substantial relationship between the transaction and the claim asserted.'” Krisko, 473 F.Supp.3d at 298 (quoting Fischbarg v. Doucet, 9 N.Y.3d 375, 380 (2007)). “Whether or not the contacts are of the appropriate nature must be determined by an analysis of the totality of the circumstances.” U.S. Theatre Corp., 825 F.Supp. at 596. Importantly, however, “Section 302(a)(1) is a single-act statute[,]” i.e., “proof of one purposeful transaction in New York is sufficient to trigger Section 302(a)(1), as long as there is a ‘substantial relationship between the transaction and the claim asserted.'” RV Skincare Brands, 394 F.Supp.3d at 381 (quoting Chloé, 616 F.3d at 170); see JDM Imp. Co. Inc. v. Shree Ramkrishna Exports Pvt., Ltd., No. 20 Civ. 8759 (VEC), 2021 WL 5450237, at *4 (S.D.N.Y. Nov. 19, 2021) (“Section 302(a)(1) is a single act statute, which means that proof of one transaction in New York is sufficient to invoke jurisdiction.”)
“To satisfy the second prong, plaintiffs must also show that ‘there is an articulable nexus, or a substantial relationship, between the claim asserted and the actions that occurred in New York.'” Rudersdal, EEOD, 2020 WL 5836517, at *5 (quoting Best Van Lines, Inc. v. Walker, 490 F.3d 239, 245 (2d Cir. 2007)). “A connection that is ‘merely coincidental' is insufficient to support jurisdiction.” Sole Resort, 450 F.3d at 103 (quoting Johnson v. Ward, 4 N.Y.3d 516, 520 (2005)). If “the relationship between the claim and transaction is too attenuated” or “merely coincidental[,]” specific jurisdiction under § 302(a)(1) does not exist. Johnson, 4 N.Y.3d at 519- 20; see Sole Resort, 450 F.3d at 104 (collecting cases in which “the event giving rise to the plaintiff's injury had, at best, a tangential relationship to any contacts the defendant had with New York” and therefore jurisdiction did not exist under § 302(a)(1)). The Court must “determine the issue of personal jurisdiction separately for each cause of action asserted[.]” Cosmetech Int'l LLC v. Der Kwei Enter. & Co., 943 F.Supp. 311, 317 (S.D.N.Y. 1996).
AFP contends that Leong “fails to plausibly allege that his claims arise from AFP's transacting of business, tortious action, or use of real property in New York[.]” (ECF No. 54 at 22). While acknowledging its “small satellite office with only 14 employees” in New York, AFP points out that the FAC contains no allegations regarding the connection between that office and his claims. (Id. at 23). Leong responds that pursuant to its partnership with the Getty Defendants, “AFP relies on its licensing agent, Getty Defendants, to sell photo ‘licenses' in the U.S.[,]” including “to New York media companies.” (ECF No. 66 at 25-26 (citing ECF Nos. 52 ¶¶ 38, 122- 30, 159-64, 180-213, 226-31; 63 ¶¶ 16-20; 64-1 - 64-2). Thus, Leong asserts, “AFP ‘transacts business' in New York for purposes of CPLR § 302(a)(1), including with New York-based media companies through Getty [sic] as a licensing agent for AFP content.” (ECF No. 66 at 26 (citing ECF No. 52 ¶¶ 159-64, 180-219, 226-31)).
The Court finds-and AFP does not seriously contest (see ECF No. 54 at 22)-that Leong's allegations that AFP maintains a New York office, entered into a partnership agreement with Getty U.S. governed by New York law, and issued a public statement out of New York are adequate to meet the “doing business” prong of § 302(a)(1). See Firma Melodiya v. ZYX Music GMBH, No. 94 Civ. 6798 (DC), 1995 WL 28493, at *2 (S.D.N.Y. Jan. 25, 1995) (holding that defendant who granted license to third party to both exploit recordings in United States and market recordings in New York constituted “doing business” under § 302(a)(1)); Linzer v. EMI Blackwood Music, Inc., 904 F.Supp. 207, 214 (S.D.N.Y. 1995) (explaining that, “by soliciting the services of New York licensing agents for the licensing and promotion of [copyrighted works] in this state and throughout the nation, a party contracts to sell its goods or services here and thus exposes itself to the jurisdiction of New York courts”); cf. Krisko, 473 F.Supp. at 299 (noting that non-domiciliary “defendants [who] have purposefully availed themselves of the privilege of doing business in New York by choosing to distribute their work to companies who will, in turn, exploit the license in New York” have been held subject to long-arm jurisdiction under § 302(a)(1)).
The crucial question in this case is whether there is “some articulable nexus between the business transacted and the cause of action sued upon[,]” McGowan v. Smith, 52 N.Y.2d 268, 272 (1981), or whether the connection between the business AFP transacts in New York and Leong's claims is “merely coincidental.” Sole Resort, 450 F.3d at 103. While AFP focuses on the activities that it performed outside of New York, such as licensing and uploading photographs, and managing the global news wire and the AFP forum, (see ECF Nos. 54 at 23; 55 ¶¶ 8-9), it cannot avoid its partnership with Getty US, pursuant to which, Leong alleges, it has licensed some of the Leong Photographs in a manner “that allegedly infringes [Leong]'s copyright.” Vasquez v. Torres Negron, 434 F.Supp.2d 199, 201-02 (S.D.N.Y. 2006) (holding that foreign defendant who contracted with New York entity to license music that allegedly infringed plaintiff's copyright was subject to long-arm jurisdiction under § 302(a)(1)). The partnership agreement between AFP and Getty U.S. is governed by New York law, and is the mechanism by which Getty U.S. acts as “the exclusive distributor of AFP's photographic editorial content in the United States.” (ECF No. 55 ¶ 7). As the Honorable Denny Chin pointed out when considering a similar contractual arrangement in Firma Melodiya, “[n]ot only is New York ‘in the United States,'” but AFP “must have anticipated the marketing” of the Leong Photographs by Getty U.S. in New York, which, Leong alleges, infringed his copyrights. 1995 WL 28493, at *2. (See, e.g., ECF No. 52 ¶¶ 159-63, 180-90). Similarly, Leong has alleged that Getty U.S. “distributed the Leong Photographs with CMI that it knew to be false, and knew had been altered[,]” which “concealed [the] Getty Defendants' infringement and induced others to ‘license' the Leong Photographs from [the] Getty Defendants[.]” (ECF No. 52 ¶¶ 148-49). Accordingly, Leong has plausibly alleged that both his copyright infringement and CMI claims have an articulable nexus to New York.
AFP's cases do not compel a different conclusion. (ECF No. 53 at 22-23). In Wahlhuetter, unlike here, there were no allegations of a licensing agreement with a New York entity that subsequently made the infringing photos available through a platform that licensees accessed in New York. 2021 WL 6205506, at *6. (See FAC ¶¶ 159-64, 180-219, 226-31). Similarly, no licensing arrangement with a New York entity was alleged in Conrad v. Latido Mitu Holdings, LLC, and the defendants operated a retail website that only incidentally displayed an allegedly infringing photograph, such that plaintiffs' “cause of action appear[ed] to have little to do with [defendants'] alleged registration to do business in New York or their operations in New York.” No. 21 Civ. 3596 (PKC), 2021 WL 5909656, at *4 (S.D.N.Y. Dec. 10, 2021). In Pablo Star Ltd. v. Welsh Government, the court evaluated specific jurisdiction under § 302(a)(3) only, a ground that Leong does not invoke here. 170 F.Supp.3d 597, 606-07 (S.D.N.Y. 2016). (See ECF No. 66 at 28 n.24; see § III.B, supra). The same is true of Chatwal Hotels & Resorts LLC v. Dollywood Company. 90 F.Supp.3d 97, 106 (S.D.N.Y. 2015) (holding that New York domiciliary plaintiff “established that the defendants reasonably should have expected [their] actions to have consequences in New York by using the website to attract customers throughout the country and the world”). Finally, in concluding that the defendant in Megna v. Biocomp Laboratories Inc. had not engaged in “purposeful activity” in New York to satisfy the first prong of § 302(a)(1), the court observed that “the mere availability of [defendant's website] to users in New York, standing alone, does not amount to transacting business in the state for purposes of section 302(a)[,]” and that plaintiff had provided “no evidence that any New York residents actually engaged in any [] transactions” through defendants' website, unlike Leong's allegations in the FAC. 166 F.Supp.3d 493, 498 (S.D.N.Y. 2016). (See ECF No. 52 ¶¶ 159-64, 180-219, 226-31).
Accordingly, the Court finds that New York will extend long-arm jurisdiction over AFP in this particular action pursuant to § 302(a)(1).
If the Court were to have found that New York's long-arm statute did not permit jurisdiction over AFP, Leong argues in the alternative that under Federal Rule of Civil Procedure 4(k)(2), the “federal long-arm statute,” he is entitled to take jurisdictional discovery to determine whether AFP's contacts with the United States as a whole are sufficient to permit personal jurisdiction. (ECF No. 66 at 30 n.26). Setting aside the impropriety of raising this argument in a footnote (see § III.B, supra), this argument is moot and no jurisdictional discovery is necessary given the Court's finding that AFP “transacts business” in New York sufficient to satisfy § 302(a)(1).
Section 302(a)(2) provides for the exercise of specific jurisdiction over a defendant who “commits a tortious act within the state[.]” N.Y. C.P.L.R. § 302(a)(2). “To establish personal jurisdiction under section 302(a)(2), a defendant must have committed a tortious act in New York.” Krisko, 473 F.Supp.3d at 299. “New York courts and the Second Circuit have ‘consistently interpreted § 302(a)(2) jurisdiction narrowly.'” Id. (quoting Carlson v. Cuevas, 932 F.Supp. 76, 79 (S.D.N.Y. 1996)).
For jurisdiction to exist under this subsection, “a defendant's tortious act must have occurred while the defendant was physically present in New York.” Krisko, 473 F.Supp.3d at 299 (citing DirecTV Latin Am., LLC v. Park 610, LLC, 691 F.Supp.2d 405, 418 (S.D.N.Y. 2010)). “Alternatively, a defendant's agent could be physically present in New York.” Krisko, 473 F.Supp.3d at 299. “To be considered an agent for jurisdictional purposes, the alleged agent must have acted in the state for the benefit of, and with the knowledge and consent of the non-resident principal[,]” who must have “some control over the agent.” CutCo Indus., 806 F.2d at 366.
The Court finds that Leong has failed to establish specific jurisdiction under § 302(a)(2) because the FAC does not allege that AFP “exercised any control over” the Getty Defendants “as would be necessary to establish that [AFP] is subject to personal jurisdiction.” Wallert v. Atlan, 141 F.Supp.3d 258, 275 (S.D.N.Y. 2015). The FAC's boilerplate assertion that AFP and the Getty Defendants “had the right and ability to supervise and control each other's infringement of the Leong Photographs,” (see ECF No. 52 ¶ 238), is the type of “conclusory non-fact-specific jurisdictional allegations or [] legal conclusion couched as a factual allegation [that] will not establish a prima facie showing of jurisdiction.” Tamam v. Franzsabank Sal, 677 F.Supp.2d 720, 725 (S.D.N.Y. 2010); see Doe v. Del. State Police, 939 F.Supp.2d 313, 321 (S.D.N.Y. 2013) (explaining that a party “may not rely on conclusory non-fact-specific jurisdictional allegations to overcome a [Rule 12(b)(2)] motion to dismiss”). In addition, Leong's emphasis throughout the rest of the FAC that AFP and the Getty Defendants were in an “ongoing partnership” through which they “cooperated” to exchange content for third-party licensing describes AFP and the Getty Defendants as equal partners and further undermines Leong's conclusory assertions that AFP controlled the Getty Defendants. (See, e.g., ECF No. 52 ¶¶ 38, 48, 116, 123). The Court therefore finds that Leong has failed to allege that AFP is subject to specific personal jurisdiction under § 302(a)(3).
4. Due Process Clause
Because one of the prongs of New York's long-arm statute extends to AFP, the Court must next consider whether exercising personal jurisdiction comports with due process. See RV Skincare Brands, 394 F.Supp.3d at 381.
“To establish personal jurisdiction over a defendant, due process requires a plaintiff to allege (1) that a defendant has ‘certain minimum contacts' with the relevant forum, and (2) that the exercise of jurisdiction is reasonable in the circumstances.” Eades, 799 F.3d at 167-68 (quoting In re Terrorist Attacks, 714 F.3d at 673). “In evaluating whether a defendant has sufficient minimum contacts, the ‘crucial question is whether the defendant has purposefully avail[ed] itself of the privilege of conducting activities within the forum state' such that [it] ‘should reasonably anticipate being haled into court there.'” JDM Import, 2021 WL 5450237, at *7 (quoting Best Van Lines, 490 F.3d at 242-43). The Supreme Court has instructed courts to consider five factors in determining the reasonableness of a particular exercise of jurisdiction:
(1) the burden that the exercise of jurisdiction will impose on the defendant; (2) the interests of the forum state in adjudicating the case; (3) the plaintiff's interest in obtaining convenient and effective relief; (4) the interstate judicial system's interest in obtaining the most efficient resolution of the controversy; and (5) the shared interest of the states in furthering substantive social policies.Chloé, 616 F.3d at 164-65 (quoting Asahi Metal Indus. Co. v. Super. Ct. of Calif., Solano Cnty., 480 U.S. 102, 113-14 (1987)). Considering these factors, the Court finds that this case presents the “rare” situation in which AFP has sufficient minimum contact to satisfy New York's long-arm statute, but that exercising jurisdiction over it would be unreasonable. Licci, 732 F.3d at 170; see Aero AG, 2022 WL 6244439, at *12 (finding that, despite minimum contacts, exercising jurisdiction was unreasonable); Al-Ahmed, 553 F.Supp.3d at 130-31 (noting that “even if New York's long-arm statute would permit the Court to exercise jurisdiction, due process would prevent it”).
Addressing first the burden on AFP, Leong does not dispute that AFP is incorporated and headquartered in France, has only a small news reporting office in New York, manages its relationship with Getty U.S. from France, and maintains its servers for its global news wire and AFP Forum in France. (ECF No. 55 ¶¶ 8-10). AFP therefore “‘would face a significant burden by having to defend this case in federal court in New York,'” particularly given the absence of employees involved with either Leong's employment or managing the Getty U.S. relationship here. See Aero AG, 2022 WL 6244439, at *12 (quoting Ramgoolie v. Ramgoolie, No. 16 Civ. 3345 (VEC) (SN), 2016 WL 11281385, at *6 (S.D.N.Y. Dec. 20, 2016), adopted by, 2017 WL 564680 (S.D.N.Y. Feb. 10, 2017)); see Porina v. Marward Shipping Co., No. 05 Civ. 5621 (RPP), 2006 WL 2465819, at *8 (S.D.N.Y. Aug. 24, 2006) (finding that “litigating a case in New York would be a substantial burden” for a foreign defendant where “[n]one of the records, files, or witnesses with information about the litigation are located in New York”), aff'd, 521 F.3d 122 (2d Cir. 2008). While “the conveniences of modern communication and transportation ease what would have been a serious burden only a few decades ago[,]” this factor nevertheless “cuts slightly in favor of” AFP. Metro. Life Ins. Co. v. Robertson-Ceco Corp., 84 F.3d 560, 574 (2d Cir. 1996).
Second, while Getty U.S. is a New York domiciliary, AFP is a French entity, and Leong is a Portuguese citizen, such that “New York's interests in having the dispute heard in this forum are ‘considerably diminished.'” Aero AG, 2022 WL 6244439, at *12 (quoting Asahi, 480 U.S. at 114)). Leong fails to explain persuasively why New York has much, if any, interest in adjudicating claims between Portuguese and French domiciliaries, even if some of the Downstream Infringers are located here. See Ramgoolie, 2016 WL 11281385, at *8 (finding that “New York ha[d] little to no interest in adjudicating” dispute between Texas domiciliary and foreign defendant, notwithstanding residence of defendant's director and shareholder in New York); see also Sherwin-Williams Co. v. C.V., No. 14 Civ. 6227 (RA), 2016 WL 354898, at *5 (S.D.N.Y. Jan. 28, 2016) (finding that “New York has no interest in adjudicating [a] case” where, inter alia, “neither party is a citizen of New York”).
Third, Leong has not shown that the reason he invokes New York's jurisdiction-the availability of a contingency fee arrangement (ECF Nos. 58 ¶ 3; 66 at 14 n.7)-means that New York has any interest in this dispute, let alone why New York's interest is stronger than, for example, Portugal, where he lives, is licensed, took many of the photographs, worked for AFP pursuant to the 2010 Agreement governed by Portuguese law, whose courts have twice already been amenable to hearing his claims against AFP, and where personal jurisdiction over AFP and the Getty Defendants would be indisputable. (See § II.A, supra). Simply put, “a New York court is no more convenient or efficient than the alternatives.” Sherwin-Williams, 2016 WL 354898, at *5; see Aero AG, 2022 WL 6244439, at *13 (finding that New York's interest was virtually nonexistent compared to Western District of Texas, where all defendants agreed to submit to jurisdiction); Porina, 2006 WL 2465819, at *8 (finding third factor not met where plaintiffs were not forum residents and had not shown why litigating in alternative forum would be less convenient).
Fourth, “in evaluating the judicial system's interest in obtaining an efficient resolution, ‘courts generally consider where witnesses and evidence are likely to be located.'” Sherwin-Williams, 2016 WL 354898, at *6 (quoting Metro. Life, 84 F.3d at 574-75). Given the presence of witnesses and documents both for Leong and AFP in Portugal, as well as the contiguous countries of France and Spain, and the absence of any showing that any of AFP's witnesses or evidence are located in New York, this factor “strongly favors declining jurisdiction[.]” Sherwin-Williams, 2016 WL 354898, at *6; see Aero AG, 2022 WL 6244439, at *13 (where defendants' documents and witnesses were not in New York but rather alternative forum, finding that fourth factor was not met).
Finally, because Leong asserts copyright claims under United States law, the Court recognizes the “shared interest” in furthering a substantive social policy, i.e., protecting copyrights. Asahi, 480 U.S. at 113. Given, however, that Leong may assert-and has asserted- copyright infringement claims in Portuguese courts (see ECF Nos. 52 ¶ 136; 40-8 ¶¶ 23-24, 34, 50, 64; see also id. at 22-24), that Portuguese courts may be amenable to considering his claims under the Act (see ECF Nos. 56 ¶ 29-30; 72-1 ¶¶ 43-44, 52-53), and even if they do not, those claims will be tolled such that he can reassert them if a Portuguese court declines to consider them (see § III.A.2.c.ii, supra), the Court finds that this factor is, at most, neutral as to the reasonableness of the exercise of personal jurisdiction over AFP.
Considering all five Asahi factors, see 480 U.S. at 113-14, the Court finds that AFP has made “a compelling case” that it would be unreasonable for New York to assert specific jurisdiction in this case, and that to do so would violate the constitutional guarantee of due process. Burger King Corp., 471 U.S. at 477; see Aero AG, 2022 WL 6244439, at *13 (finding that balance of Asahi factors demonstrated that exercise of specific personal jurisdiction would be unreasonable). I therefore recommend, in the alternative, that Leong's claims against AFP be dismissed for lack of personal jurisdiction.
IV. CONCLUSION
For the reasons set forth above, I respectfully recommend that the Motion be GRANTED and the action be DISMISSED pursuant to the doctrine of forum non conveniens, on the condition that Defendants agree to: (1) accept service in Portugal; (2) submit to the jurisdiction of the Lisbon District Court's Labour Division and/or Intellectual Property Division; (3) waive any statute of limitations defense that may have arisen since the filing of this action; (4) toll the statute of limitations as to Leong's claims under the Act and permit Leong to move to reopen this action and reassert those claims in the event that a Portuguese court were to decline to hear such claims; and (5) agree that Leong is not precluded from arguing that Clause 7 created a license that he rescinded.
In the alternative, I respectfully recommend that the claims against AFP be DISMISSED for lack of personal jurisdiction.
NOTICE OF PROCEDURE FOR FILING OBJECTIONS TO THIS REPORT AND RECOMMENDATION
The parties shall have fourteen (14) days (including weekends and holidays) from service of this Report and Recommendation to file written objections pursuant to 28 U.S.C. § 636(b)(1) and Rule 72(b) of the Federal Rules of Civil Procedure. See also Fed.R.Civ.P. 6(a), (d) (adding three additional days when service is made under Fed.R.Civ.P. 5(b)(2)(C), (D) or (F)). A party may respond to another party's objections within fourteen (14) days after being served with a copy. Fed.R.Civ.P. 72(b)(2). Such objections, and any response to objections, shall be filed with the Clerk of the Court. See 28 U.S.C. § 636(b)(1); Fed.R.Civ.P. 6(a), (d), 72(b). Any requests for an extension of time for filing objections must be addressed to Judge Rochon.
FAILURE TO OBJECT WITHIN FOURTEEN (14) DAYS WILL RESULT IN A WAIVER OF OBJECTIONS AND WILL PRECLUDE APPELLATE REVIEW. See 28 U.S.C. § 636(b)(1); Fed.R.Civ.P. 6(a), (d), 72(b); Thomas v. Arn, 474 U.S. 140 (1985).