Plaintiffs – the owners of the copyright in photographs – sued defendants for copyright infringement over the unauthorized publication of photos on one of the business defendant’s websites that used the domain name <4umf.com>. The court awarded judgment and damages in plaintiffs’ favor when the business defendant defaulted.
Even after having received two extensions of time from the court, though, plaintifsf had not yet served the summons and complaint upon one of the individual defendants. The court ordered plaintiffs to show cause why the action should not be dismissed against that defendant for failure to serve him. In response, plaintiffs stated that despite diligent efforts, they could not identify or locate the individual plaintiff. So it asked the court – via a “motion to seize domain name” – to order the turnover of the <4umf.com> domain name for the purpose of uncovering the defendant’s true identity.
The court denied the motion. It found that plaintiffs had failed to demonstrate why the court should exercise auhority over the domain name as property subject to the court’s control and authority. It rejected plaintiffs’ attempts to liken the situation to other cases in which courts had ordered the seizure of domain names in trademark actions for over disputed domain names. “[S]eizures under the former circumstances were contemplated by the [Anticybersquatting Consumer Protection Act] to combat ‘cybersquatting.'”
The court also noted that seizure of copyrighted materials is a permissible remedy under the Copyright Act and has been granted by certain courts in some circumstances. But in this case, plaintiffs did not seek seizure pursuant to the Copyright Act § 503, nor did they seek impoundment or seizure in their complaint or motion for default. Plaintiffs sought only damages and attorneys’ fees, which the Court awarded.
Further, the court noted that plaintiffs were not seeking to reclaim their copyrighted material by seizing the six infringing photos, but rather the entirety of the domain name. The court was sympathetic – although plaintiffs may have had difficulty locating defendants and enforcing the default judgment, plaintiffs had not demonstrated why that entitled them to seizure of the whole domain name, or how seizing the domain name would facilitate identification or location of defendants or collection on the judgment. Even if seizure were appropriate at this late stage, it the court found that to be an overly broad remedy for the violations here.
BWP Media USA, Inc. v. NV Media Group, Inc., 2015 WL 2152679 (S.D.N.Y. May 6, 2015)