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Volume X, Number 336

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Advertising Falls within Commercial Activity Exception to Sovereign Immunity

The US Court of Appeals for the Second Circuit affirmed a district court’s denial of a motion to dismiss a copyright infringement suit on the ground of sovereign immunity, holding that advertising activity in the United States on behalf of a sovereign government falls within the commercial activity exception to sovereign immunity. Pablo Star Ltd. v. Welsh Gov’t, Case No. 19-1262 (2d Cir. June 8, 2020) (Lynch, J.).

Pablo Star is a company registered under the laws of Ireland and the United Kingdom. The Welsh government is a political subdivision of the United Kingdom. Pablo Star sued the Welsh government, along with multiple New-York-based media companies working with the Welsh government, for copyright infringement. Pablo Star alleged infringement of its copyrights in photographs that the Welsh government used in online and printed materials advertising Welsh-themed events in New York and promoting tourism to Wales. The Welsh government moved to dismiss, asserting sovereign immunity under the Foreign Sovereign Immunities Act (FSIA), which provides for presumptive immunity of a foreign state in federal court. The district court denied the motion to dismiss, holding that the commercial activity exception to the FSIA applied because the acts of the Welsh government that resulted in Pablo Star’s claims constituted commercial activity, and the activity had substantial contact with the United States. The Welsh government sought an interlocutory appeal.

The Second Circuit affirmed, finding that the Welsh government abrogated its sovereign immunity by engaging in commercial activity that had substantial contact with the United States. On the commercial activity prong, the Court rejected the argument that the Welsh government’s conduct was governmental, rather than commercial, because it promoted tourism to Wales. The Court explained that an activity is deemed commercial based on its nature rather than its purpose. Activity is commercial if a foreign state performs the types of actions typical of a private party engaging in commerce. A state’s motives, including motives without profit or to fulfill sovereign objectives, are irrelevant. The Welsh government’s assertion that it acted as a sovereign government to promote Welsh culture and tourism conflated the act with its purpose. The broader characterization of promoting tourism also did not distinguish the activity from functions regularly undertaken by private entities because the profit motive was irrelevant. Because the publication of advertising materials is an activity regularly performed by private-sector businesses, the court affirmed the district court’s conclusion that the Welsh government engaged in commercial activity.

The Second Circuit also distinguished Pablo Star’s claims from those in cases where sovereign immunity applied. Claims dismissed on the ground of sovereign immunity lacked a sufficient nexus between a party’s injury and the governmental entity’s commercial activity. They instead stemmed from functions unique to government, such as detention and punishment or the employment of civil service personnel. Pablo Star’s copyright infringement claim, by contrast, directly resulted from the Welsh government’s commercial conduct, including its unauthorized use of photographs in advertising materials promoting Welsh culture and tourism.

On the substantial contact prong, the Second Circuit agreed that the Welsh government’s commercial activity had substantial contact with the United States. The Court rejected the argument that the Welsh government’s activities were limited to the UK consular offices in New York, which are not subject to the commercial activity exception. The Court pointed out that the Welsh government framed its campaign as “The Welsh in America,” provided an exhibition for display in US venues, distributed the copyrighted photographs to US media companies for printing in local newspapers in multiple cities, and helped organize a walking tour in New York. The Court determined that the evidence taken together demonstrated that the Welsh government’s commercial activity had substantial contact with the United States.

Practice Note: Foreign sovereign entities should be aware that sovereign immunity can be abrogated if they engage in commercial activity unrelated to governmental powers and typically performed by private citizens. Only activities rooted in authority unique to sovereign powers qualify for sovereign immunity defense.

© 2020 McDermott Will & EmeryNational Law Review, Volume X, Number 170
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About this Author

Associate

Hala Mourad* focuses her practice on intellectual property litigation matters in federal district court and the US International Trade Commission. She works with clients to litigate patent cases spanning various technologies including consumer electronics, telecommunications, medical and surgical devices, materials engineering, and biotechnology. She has experience in all phases of litigation from pre-litigation investigations through trial and appeal.

Hala is also a registered patent attorney and has experience in contentious patent proceedings before the Patent Trial and Appeal...

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