AMERICAN EDUCATIONAL RESEARCH ASSOCIATION, INC. et al v. PUBLIC.RESOURCE.ORG, INC.

Filing 15

MOTION to Strike #12 Answer to Complaint, COUNTERCLAIM re Defendant's Jury Demand by AMERICAN EDUCATIONAL RESEARCH ASSOCIATION, INC., AMERICAN PSYCHOLOGICAL ASSOCIATION, INC., NATIONAL COUNCIL ON MEASUREMENT IN EDUCATION, INC. (Attachments: #1 Text of Proposed Order Striking Defendant's Jury Demand)(Hudis, Jonathan)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
AMERICAN EDUCATIONAL RESEARCH
ASSOCIATION, INC., AMERICAN
PSYCHOLOGICAL ASSOCIATION, INC.,
and NATIONAL COUNCIL ON
MEASUREMENT IN EDUCATION, INC.,
Plaintiffs,
v.
PUBLIC.RESOURCE.ORG, INC.,
Defendant.

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Civil Action No. 1:14-cv-00857-CRC
PLAINTIFFS’ MOTION TO STRIKE
DEFENDANT’S DEMAND FOR A
JURY TRIAL

Plaintiffs, American Educational Research Association, Inc. (“AERA”), American
Psychological Association, Inc. (“APA”), and National Council on Measurement in Education,
Inc. (“NCME”) (collectively, “Plaintiffs”), respectfully move this Court to strike Defendant’s
jury demand. The grounds for this Motion are set forth in the Memorandum of Points and
Authorities submitted herewith.
Prior to the filing of this motion, pursuant to LCvR7(m), on July 22, 2014, Plaintiffs’
undersigned counsel conferred with Defendant’s counsel, Mitch Stoltz, via telephone and e-mail
in a good faith effort to determine whether there would be any opposition to the relief sought by
Plaintiffs. Defendants will be opposing this motion.

Respectfully submitted,
OBLON, SPIVAK, McCLELLAND,
MAIER & NEUSTADT,LLP
Dated: August 21, 2014

By:

/s/ Jonathan Hudis
Jonathan Hudis (DC Bar # 418872)
Kathleen Cooney-Porter (DC Bar # 434526)
OBLON, SPIVAK, McCLELLAND,
MAIER & NEUSTADT, LLP
1940 Duke Street
Alexandria, VA 22314
Tel. [phone]
Fax [phone]
E-Mail [e-mail]
E-Mail [e-mail]
Attorneys for Plaintiffs
AMERICAN EDUCATIONAL RESEARCH
ASSOCIATION, INC.
AMERICAN PSYCHOLOGICAL
ASSOCIATION, INC.
NATIONAL COUNCIL ON
MEASUREMENT IN EDUCATION, INC.

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CERTIFICATE OF SERVICE
I hereby certify that on August 21, 2014, PLAINTIFFS’ MOTION TO STRIKE
DEFENDANT’S DEMAND FOR A JURY TRIAL, MEMORANDUM OF POINTS AND
AUTHORITIES

IN

SUPPORT

OF

PLAINTIFFS’

MOTION

TO

STRIKE

DEFENDANT’S DEMAND FOR A JURY TRIAL, and a [PROPOSED] ORDER were filed
using the CM/ECF system that sent notice of the filing of these documents to all counsel of
record, and was also served via e-mail to:
Andrew P. Bridges
FENWICK & WEST LLP
555 California Street, 112th Floor
San Francisco, CA 94104
[e-mail]
David Halperin
1530 P Street NW
Washington, DC 20005
[e-mail]
Mitchell L. Stoltz
ELECTRONIC FRONTIER FOUNDATION
815 Eddy Street
San Francisco, CA 94109
[e-mail]
Counsel for Defendant
PUBLIC.RESOURCE.ORG, INC.,
/s/ Jonathan Hudis
Jonathan Hudis

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
AMERICAN EDUCATIONAL RESEARCH
ASSOCIATION, INC., AMERICAN
PSYCHOLOGICAL ASSOCIATION, INC.,
and NATIONAL COUNCIL ON
MEASUREMENT IN EDUCATION, INC.,
Plaintiffs,
v.
PUBLIC.RESOURCE.ORG, INC.,
Defendant.

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Civil Action No. 1:14-cv-00857-CRC
MEMORANDUM OF POINTS AND
AUTHORITIES IN SUPPORT OF
PLAINTIFFS’ MOTION TO STRIKE
DEFENDANT’S DEMAND FOR A
JURY TRIAL

Jonathan Hudis (DC Bar # 418872)
Kathleen Cooney-Porter (DC Bar # 434526)
OBLON, SPIVAK, McCLELLAND,
MAIER & NEUSTADT, LLP
1940 Duke Street
Alexandria, VA 22314
Tel. [phone]
Fax [phone]
E-Mail [e-mail]
E-Mail [e-mail]
Attorneys for Plaintiffs
AMERICAN EDUCATIONAL RESEARCH
ASSOCIATION, INC.
AMERICAN PSYCHOLOGICAL
ASSOCIATION, INC.
NATIONAL COUNCIL ON
MEASUREMENT IN EDUCATION, INC.

TABLE OF CONTENTS
TABLE OF AUTHORITIES ......................................................................................................... iii 
PRELIMINARY STATEMENT .................................................................................................... 1 
STATEMENT OF FACTS ............................................................................................................. 1 
ARGUMENT .................................................................................................................................. 2 
I. 

 BECAUSE NONE OF THE PARTIES SEEK AN AWARD OF MONEY DAMAGES,

THERE IS NO RIGHT TO A JURY TRIAL ..................................................................... 2 
CONCLUSION ............................................................................................................................... 5 

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TABLE OF AUTHORITIES
Cases
Arakawa v. Reagan, 666 F. Supp. 254 (D.D.C. 1987).....................................................................2
Chauffers, Teamsters & Helpers v. Terry, 494 U.S. 558 (1989) .....................................................2
Crocker v. Piedmont Aviation, Inc., 49 F.3d 735 (D.C. Cir. 1995) .................................................2
*Feltner v. Columbia Pictures TV, 523 U.S. 340 (1998) ................................................................2
In re Tech. Licensing Corp., 423 F.3d 1286 (Fed. Cir. 2005) .........................................................3
James v. Pa. Gen. Ins. Co., 349 F.2d 228 (D.C. Cir. 1965).............................................................4
KAO Corp. v. Unilever United States, Inc., No. 01-CV-680,
2003 U.S. Dist. LEXIS 6677 (D. Del. Apr. 17, 2003) .........................................................4
*Luria v. United States, 231 U.S. 9 (1913)......................................................................................2
Marseilles Hydro Power, LLC v. Marseilles Land & Water Co.,
299 F.3d 643 (7th Cir. 2002) ...............................................................................................3
*Parsons v. Bedford, 28 U.S. 433 (1830) ........................................................................................2
Resolution Trust Corp. v. Marshall, 939 F.2d 274 (5th Cir. 1991) .................................................4
Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (1983) ........................................4
Taylor Corp. v. Four Seasons Greeting, LLC, 403 F.3d 958 (8th Cir. 2005)...............................3, 4
Tegal Corp. v. Tokyo Elec. Corp., 257 F.3d 1331 (Fed. Cir. 2001) ................................................3
*Woodell v. Int’l Bhd. Of Elec. Workers, 502 U.S. 93 (1991) .....................................................2, 3
Treatises
MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT (2014) ....................................3
Other Authorities
U.S. CONST. amend. VII ..................................................................................................................2

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PRELIMINARY STATEMENT
Plaintiffs, the American Educational Research Association, Inc. (“AERA”), the American
Psychological Association, Inc. (“APA”), and the National Council on Measurement in
Education (“NCME”) (collectively, “Plaintiffs”), submit this Memorandum of Points and
Authorities in support of Plaintiffs’ Motion to Strike Defendant’s Jury Demand.
There is no right to a jury trial in this case. Plaintiffs request only equitable, injunctive,
relief in their Complaint, and accordingly, did not request a jury trial.

Defendant, in its

counterclaim for declaratory relief and answer to Plaintiffs’ Complaint, requested a jury trial.
However, as none of the parties seek money damages in this case, Plaintiffs respectfully request
that Defendant’s Jury Demand be stricken.
STATEMENT OF FACTS
On May 23, 2014, Plaintiffs filed their Complaint (D.I. 1) alleging Defendant’s copyright
infringement and contributory copyright infringement of Plaintiffs’ work entitled “Standards for
Educational and Psychological Testing” (the “Standards”). Plaintiffs’ Complaint does not seek
relief in the form of money damages.
On July 14, 2014, Defendant filed its answer and a counterclaim seeking declaratory
relief and requesting a jury trial (D.I. 12). However, Defendant’s request for relief does not
include a claim for money damages. Defendant seeks only a declaration that it is not liable for
copyright infringement or contributory copyright infringement, and an order enjoining Plaintiffs
from asserting copyright claims against Defendant in connection with the reproduction or posting
of the Standards.

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ARGUMENT
I.

BECAUSE NONE OF THE PARTIES SEEK AN AWARD OF MONEY DAMAGES,
THERE IS NO RIGHT TO A JURY TRIAL
There is no right to a trial by jury in cases where only equitable remedies are sought.
Luria v. United States, 231 U.S. 9, 28 (1913); see also Parsons v. Bedford, 28 U.S. 433, 446-47
(1830); Arakawa v. Reagan, 666 F. Supp. 254, 259 n. 9 (D.D.C. 1987) (striking plaintiff’s
request for a jury trial where only equitable claims remained). The Seventh Amendment to the
U.S. Constitution provides that “[i]n Suits at common law, where the value in controversy shall
exceed twenty dollars, the right of trial by jury shall be preserved.” U.S. CONST. amend. VII.
Courts have interpreted “‘[s]uits at common law’ to refer ‘not merely [to] suits, which the
common law recognized among its old and settled proceedings, but [to] suits in which legal
rights were to be ascertained and determined, in contradistinction to those where equitable rights
alone were recognized, and equitable remedies were administered.’” See Feltner v. Columbia
Pictures TV, 523 U.S. 340, 347-48 (1998) (quoting Parsons, 28 U.S. at 447) (finding that a
request for an award of statutory damages in a copyright infringement action provided the right
to a jury trial).
To determine whether an action will resolve legal (as opposed to purely equitable) rights,
courts “examine both the nature of the issues involved and the remedy sought.” See Woodell v.
Int’l Bhd. of Elec. Workers, 502 U.S. 93, 97 (1991). “‘First, [courts] compare the statutory
action to the 18th-century actions brought in the courts of England prior to the merger of the
courts of law and equity. Second, [courts] examine the remedy sought and determine whether it
is legal or equitable in nature.’” Id. (citing Chauffers, Teamsters & Helpers v. Terry, 494 U.S.

558, 565 (1989)); see also Crocker v. Piedmont Aviation, Inc., 49 F.3d 735, 745 (D.C. Cir. 1995)
(using the Supreme Court’s two-step inquiry to determine whether plaintiff had a right to a jury
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trial). When conducting this analysis, the second inquiry, the nature of the remedy sought, is
more important. See Woodell, 502 U.S. at 97.
The first prong’s historical inquiry is not necessary where, as here, Plaintiffs’ suit seeks
only equitable relief. Rather, the historical inquiry is used “to determine whether a modern legal
right has a sufficient analogy to a right enforced by common law courts in the eighteenth century
to be enforceable by ‘a suit at common law’ within the meaning of the Seventh Amendment.”
Marseilles Hydro Power, LLC v. Marseilles Land & Water Co., 299 F.3d 643, 649 (7th Cir.
2002). However, “[a] suit seeking only equitable relief is not a suit at common law, regardless of
the nature of the issues likely or even certain to arise in the case.” Id. at 648. Additionally, the
historical inquiry is “not about unsettling the principle that there is no right to a jury trial when
the plaintiff is seeking only equitable relief” as “that principle is firm.” Id. at 649.
In intellectual property actions in particular, there is no right to a jury trial where a
plaintiff seeks only equitable relief. See e.g. Taylor Corp. v. Four Seasons Greetings, LLC, 403
F.3d 958, 969 (8th Cir. 2005) (concluding that the defendant was not entitled to a jury trial where
the plaintiff sought a permanent injunction based on copyright infringement); In re Tech.
Licensing Corp., 423 F.3d 1286, 1290-91 (Fed. Cir. 2005) (noting that “if the patentee seeks only
equitable relief, the accused infringer has no right to a jury trial”); Tegal Corp. v. Tokyo Elec.
Corp., 257 F.3d 1331, 1341 (Fed. Cir. 2001) (“[A] defendant, asserting only affirmative defenses
and no counterclaims, does not have a right to a jury trial in a patent infringement suit if the only
remedy sought by the plaintiff-patentee is an injunction.”); 3-12 MELVILLE B. NIMMER & DAVID
NIMMER, NIMMER ON COPYRIGHT § 12.10[A] (2014) (“It is reasonably clear . . . that a plaintiff
seeking only remedies determined by the judge—e.g., injection, seizure, fees, and declaratory

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relief—is not entitled to a trial by jury. That conclusion applies to the copyright sphere as to all
others.”).
In cases involving claims for declaratory relief, the right to a jury trial depends “on
whether the action is simply the counterpart of a suit in equity—that is, whether an action in
equity could be maintained if the declaratory judgment were unavailable—or whether the action
is merely an inverted lawsuit.” James v. Pa. Gen. Ins. Co., 349 F.2d 228, 230 (D.C. Cir. 1965).
Moreover, “an alleged infringer has no entitlement to a trial by jury by virtue of pleading
counterclaims . . . which are equitable in nature with no attendant right to damages.” KAO Corp.
v. Unilever United States, Inc., No. 01-CV-680, 2003 U.S. Dist. LEXIS 6677, at *9 (D. Del. Apr.
17, 2003), aff’d, 441 F.3d 963 (Fed. Cir. 2006).1 Accordingly, as Defendant’s declaratory relief
counterclaim is simply the inverse of Plaintiffs’ copyright infringement claims and requests only
equitable relief, Defendant has no right to a jury trial.
Moreover, the mere fact that Plaintiffs seek an award of attorneys’ fees and costs does not
provide Defendant a right to a jury trial. Resolution Trust Corp. v. Marshall, 939 F.2d 274, 279
(5th Cir. 1991) (“Since there is no common law right to recover attorneys fees, the Seventh
Amendment does not guarantee a trial by jury to determine the amount of reasonable attorneys
fees.”).
Here, neither party requests an award of money damages. All parties seek only equitable
relief. As this action is entirely equitable in nature, Defendant does not have a right to a trial by
jury. Additionally, as Plaintiffs chose to seek only equitable remedies, Defendant’s counterclaim

  While KAO Corp. was directed to allegations of patent infringement, Courts have recognized
that there is “a historic kinship between patent law and copyright law.” Sony Corp. of Am. v.
Universal City Studios, Inc., 464 U.S. 417, 439 (1983); see also Taylor, 403 F.3d at 969
(applying the Federal Circuit’s decision in Tegal to the copyright action). Therefore, KAO Corp.
should apply to the copyright and contributory copyright infringement claims that are the subject
of the present action. 
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does not give rise to the right to a jury trial. Defendant’s request for a jury trial therefore should
be stricken.
CONCLUSION
For the foregoing reasons, Plaintiffs respectfully request that Defendant’s jury demand be
stricken.
Respectfully submitted,
OBLON, SPIVAK, McCLELLAND,
MAIER & NEUSTADT,LLP
Dated: August 21, 2014

By:

/s/ Jonathan Hudis
Jonathan Hudis (DC Bar # 418872)
Kathleen Cooney-Porter (DC Bar # 434526)
OBLON, SPIVAK, McCLELLAND,
MAIER & NEUSTADT, LLP
1940 Duke Street
Alexandria, VA 22314
Tel. [phone]
Fax [phone]
E-Mail [e-mail]
E-Mail [e-mail]
Attorneys for Plaintiffs
AMERICAN EDUCATIONAL RESEARCH
ASSOCIATION, INC.
AMERICAN PSYCHOLOGICAL
ASSOCIATION, INC.
NATIONAL COUNCIL ON
MEASUREMENT IN EDUCATION, INC.

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