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

Filing 16

Memorandum in opposition to re #15 MOTION to Strike #12 Answer to Complaint, COUNTERCLAIM re Defendant's Jury Demand filed by PUBLIC.RESOURCE.ORG, INC.. (Attachments: #1 Text of Proposed Order)(Stoltz, Mitchell)

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.;

Civil Action No. 1:14-cv-00857-CRC

Plaintiffs-Counterdefendants,
v.

DEFENDANT-COUNTERCLAIMANT
PUBLIC.RESOURCE.ORG, INC.’S
MEMORANDUM IN OPPOSITION TO
PLAINTIFFS’ MOTION TO STRIKE
JURY DEMAND
Action Filed: May 23, 2014

PUBLIC.RESOURCE.ORG, INC.,
Defendant-Counterclaimant.
Defendant-Counterclaimant Public.Resource.Org, Inc. (“Public Resource”) has a Seventh
Amendment right to a jury trial on its declaratory judgment claims. Accordingly, Public
Resource opposes Plaintiff-Counterdefendants’ motion to strike the jury demand, and requests
oral argument.
Plaintiff-Counterdefendants have asked for injunctive relief as well as attorney fees and
costs, which they assert are equitable remedies. Public Resource, in turn, has requested
declaratory relief. Specifically, Public Resource seeks a declaration that Public Resource is not
liable for copyright infringement for copying, publishing, and reformatting the testing standard in
which Plaintiff-Counterdefendants claims rights because that standard has been incorporated into
U.S. law. Such a declaration would affect Plaintiff-Counterdefendants’ right to any remedy, legal
or equitable. As a result, Public Resource has a right to a jury trial in this case, regardless of how
Plaintiff-Counterdefendants have pled their affirmative claims.
The issue here is whether putative copyright holders can defeat the Seventh Amendment
rights of a party accused of infringement where that party seeks declaratory relief but the

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putative rightsholders seek only equitable relief. Precedent provides an answer: given the
importance of the right to a jury trial, when one party brings a legal claim and requests a jury, the
other party may not thwart that request by bringing only equitable claims. See, e.g., Beacon
Theatres, Inc. v. Westover, 359 U.S. 500, 510 (1959); Pac. Indem. Co. v. McDonald, 107 F.2d
446, 449 (9th Cir. 1939).
Public Resource’s declaratory judgment claim is a legal claim. Not only does it depend
on questions of fact, but, assuming arguendo the facts as pled in the Complaint, PlaintiffCounterdefendants could also have requested damages, making Public Resource’s related
declaratory judgment claim a legal one. In addition, though Plaintiff-Counterdefendants’ claims
for injunctive relief and Public Resource’s declaratory judgment claims share some issues of fact
and law, the claims are not inverses of one another. Given the existence of an actual controversy,
Public Resource’s claims may well survive even if Plaintiff-Counterdefendants’ claims are
dismissed. Because the counterclaims stand on their own, Plaintiff-Counterdefendants’ artful
pleading cannot deprive Public Resource of its right to a jury trial. The Court should deny
Plaintiff-Counterdefendants’ motion to strike the jury demand.
ARGUMENT
The right to a jury trial is one of paramount importance. “Maintenance of the jury as a
fact-finding body is of such importance and occupies so firm a place in our history and
jurisprudence that any seeming curtailment of the right to a jury trial should be scrutinized with
the utmost care.” Beacon Theatres, 359 U.S. at 501 (quoting Dimick v. Schiedt, 293 U.S. 474,
486 (1935)).

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I.

Public Resource’s Declaratory Judgment Claims Are Legal Claims Entitled To Jury
Trial.
The type of claim that would have arisen if the parties’ positions were reversed

determines the character of a declaratory judgment claim. Pac. Indem. Co., 107 F.2d at 448.
Specifically, a declaratory judgment claim is considered legal if, had “the defendant [become]
the plaintiff, and vice versa, the issues [were] ones which in the absence of the statute for
declaratory relief would be tried at law by a court and jury.” Id.; see also James v. Pa. Gen. Ins.
Co., 349 F.2d 228, 230 (D.C. Cir. 1965); AstenJohnson, Inc. v. Columbia Cas. Co., 562 F.3d
213, 223 (3d Cir. 2009). Here, Plaintiff-Counterdefendants’ purported authorship and ownership
of the standard at issue, Public Resource’s fair use defense, and other foundational issues depend
on “[q]uestions of historical fact” that are ordinarily heard by a jury. Langman Fabrics v. Graff
Californiawear, Inc., 160 F.3d 106, 111 (2d Cir. 1998), amended by 169 F.3d 782 (2d Cir.
1998); see also Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 560, (1985)
(“Fair use is a mixed question of law and fact.”). In such circumstances, “there is an absolute
right to a jury trial” for the declaratory judgment claim. Pac. Indem. Co., 107 F.2d at 448.
Furthermore, contrary to what Plantiff-Counterdefendants assert, Public Resource’s
claims are not direct inverses of Plaintiff-Counterdefendants’ claims. While PlaintiffCounterdefendants cite to James v. Pennsylvania General Insurance Co. for the holding that the
nature of a claim depends on “whether the action is simply the counterpart of a suit in equity,”
349 F.2d 228, 230 (D.C. Cir. 1965), they misconstrue it. Mem. in support of Motion to Strike
Jury Demand 4. The “counterpart” of a declaratory judgment claim is not the opposing party’s
claims. It is, rather, the equivalent claim that would have been brought before the merger of law
and equity. Id. at 231 (comparing declaratory judgment claim to the equivalent claim that could
be maintained “at common law”). Likewise, the “counterpart” of Public Resource’s declaratory

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judgment claim is not Plaintiff-Counterdefendants’ claim. It is the claim that would have been
brought pre-merger. As noted above, this action—which relies on questions of fact and
potentially involved money damages—would have gone to a court of law.
At the same time, the nature of Plaintiff-Counterdefendants’ claim bolsters the legal
character of Public Resource’s declaratory judgment claim: where, as here, plaintiffs could have
sought damages, the defendant’s declaratory judgment claim is a legal one. For example, in
Sanofi-Synthelabo v. Apotex, Inc., the court held that a jury trial is available for a declaratory
judgment claim on non-infringement where the purported patent holder “could choose either to
pursue a legal or equitable remedy.” No. 02 CIV.2255 (RWS), 2002 WL 1917871, at *4
(S.D.N.Y. Aug. 20, 2002). Although the patent holder chose not to seek damages, the availability
of a damages claim made the alleged infringer’s declaratory judgment request a legal claim, to
which a jury right attached. Conversely, where “there exists no possibility that damages could be
awarded” to a patent holder (because the alleged infringement had not yet commenced), a court
held the alleged infringer’s declaratory judgment claim to be equitable. Shubin v. U.S. Dist.
Court for S. Dist. of Cal., Cent. Div., 313 F.2d 250, 251 (9th Cir. 1963). Here, assuming
arguendo the allegations in their complaint, Plaintiff-Counterdefendants could have sought
money damages. See Complaint

(ECF No. 1) ¶ 132. As a result, Public Resource’s

counterclaims for declaratory judgment of non-infringement must be characterized as legal. See
Sanofi-Synthelabo, 2002 WL 1917871, at *4.1

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Plaintiffs cite In re Tech. Licensing Corp., 423 F.3d 1286 (Fed. Cir. 2005) for the proposition
that a rightsholder can deny an alleged infringer the right to a jury trial on a claim for declaratory
relief. That opinion, which is not binding on this Court, “is directly contrary to English and
succeeding American precedent applying Seventh Amendment principles,” and should not be
followed here. Id. at 1296 (Newman, J, dissenting).

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II.

Plaintiff-Counterdefendants’ Pleading Should Not Deprive Public Resource of its
Seventh Amendment Right.
Where, as here, one party’s claims give rise to a Seventh Amendment right to jury trial,

an opposing party cannot frustrate that right by artful pleading of its own claims. This is because
“the right to jury trial is a constitutional one . . . while no similar requirement protects trials by
the court.” Beacon Theaters, 359 U.S. at 510.
The order of claims cannot determine the right to a jury trial. In Beacon Theaters, Fox
sued Beacon Theaters, which had accused Fox of violating the Sherman Antitrust Act. Fox
sought a declaration that its practices were lawful and requested an injunction against further
lawsuits. Beacon Theaters counterclaimed for damages and demanded a jury trial. Id. at 503. In
affirming a petition for mandamus to require a jury trial, the Supreme Court held that “if Beacon
would have been entitled to a jury trial in a treble damage suit against Fox it cannot be deprived
of that right merely because Fox took advantage of the availability of declaratory relief to sue
Beacon first.” Id. at 504; see also Pac. Indem. Co., 107 F.2d at 449 (“[P]laintiff, by first bringing
suit and thus inverting the parties, could not deprive defendant of his right to a jury. . . . [W]hile
the legislature had the power to grant the plaintiff the privilege of himself commencing the suit,
it had not the power to give him, and we think did not intend to give him, the privilege of thus
depriving defendant of his constitutional right.”); In re Envtl. Ins. Declaratory Judgment Actions,
149 N.J. 278, 303 (1997) (“By ‘beating the plaintiff into court,’ the insurer cannot deprive that
person of a right to jury trial.”).
Moreover, once Plaintiff-Counterdefendants sued, Public Resource had no choice but to
bring its declaratory relief claims in the same case. Fed. R. Civ. P. 13(a)(1). Because the two
claims must co-exist in one lawsuit, the presence of Plaintiff-Counterdefendants’ equitable
claims should not alter the character of Public Resource’s legal claims.

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Finally, if Plaintiff-Counderdefendants’ claims are dismissed, Public Resource’s claims
may well survive, further minimizing the role that Plaintiff-Counterdefendants’ pleading should
play in determining Public Resource’s Seventh Amendment right. The two claims are not mirror
images of one another: Unlike Public Resource’s claims, Plaintiff-Counterdefendants’ claims
require a showing of irreparable harm to them, an absence of substantial harm to Public
Resource, and that the public interest favors an injunction. Davis v. Pension Benefit Guar. Corp.,
571 F.3d 1288, 1291 (D.C. Cir. 2009). If Plaintiff-Counterdefendants’ claims are dismissed, they
can have no effect on Public Resource’s right to a jury trial on its remaining claims. See In re
Evangelist, 760 F.2d 27, 32 (1st Cir. 1985); Hildebrand v. Board of Trustees, 607 F.2d 705, 710
(6th Cir. 1979).
III.

To Protect Public Resource’s Seventh Amendment Right with Respect to its
Counterclaims, a Jury Must Try the Issues Of Copyright Validity And Alleged
Infringement.
This case involves both Plaintiff-Counterdefendants’ claims for injunction and Public

Resource’s requests for declaratory relief. The two share certain foundational questions of fact
and law, including whether Plaintiff-Counterdefendants hold a valid copyright, whether PlaintiffCounterdefendants knew of, encouraged, or acquiesced in the incorporation of the testing
standard into law, and the facts establishing Public Resource’s fair use defense. Public Resource
has a Seventh Amendment right to jury trial on all aspects of its declaratory judgment claims,
including these determinations. See Beacon Theatres, 359 U.S. at 506. Because a bench trial on
these issues with respect to Plaintiff-Counterdefendants’ infringement claims could determine
the outcome of Public Resource’s counterclaims by collateral estoppel, the Court should submit

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these issues to the jury. Id.2 With respect to Plaintiff-Counterdefendants’ claims, the jury’s
determination can be treated as advisory. See Dawson v. Contractors Transp. Corp., 467 F.2d
727, 730 (D.C. Cir. 1972); Nat’l Ass’n For Advancement of Colored People (NAACP) v.
Acusport Corp., 226 F. Supp. 2d 391 (E.D.N.Y. 2002); Fleming James, Jr., Right to A Jury Trial
in Civil Actions, 72 YALE L.J. 655, 664 (1963) (“There is no reason, apart from history, why
sharply disputed issues of fact in [an equitable claim] should not be tried to a jury if that mode of
trial is thought preferable.”).
CONCLUSION
For the foregoing reasons, Public Resource is entitled to a jury trial, and the Court should
deny Plaintiff-Counterdefendants’ motion.
Dated: September 8, 2014

Respectfully submitted,
/s/ Mitchell L. Stoltz
Mitchell L. Stoltz (D.C. Bar No. 978149)
[e-mail]
ELECTRONIC FRONTIER FOUNDATION
815 Eddy Street
San Francisco, CA 94109
Telephone: [phone]
Facsimile: [phone]
David Halperin (D.C. Bar No. 426078)
[e-mail]
1530 P Street NW
Washington, DC 20005
Telephone: [phone]

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Although Plaintiff-Counterdefendants are not entitled to any remedy in this case, the scope of
any hypothetical injunction following a jury’s determination of the facts would be determined by
the Court. See Educational Testing Servs. v. Katzman, 670 F. Supp. 1237 n.2 (D.N.J. 1987); 3
MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT § 12.10[A] (2014).
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Andrew P. Bridges (admitted)
[e-mail]
FENWICK & WEST LLP
555 California Street, 12th Floor
San Francisco, CA 94104
Telephone: [phone]
Facsimile: [phone]
Attorneys for Defendant-Counterclaimant
Public.Resource.Org, Inc.

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