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

Filing 17

REPLY to opposition to motion re #15 MOTION to Strike #12 Answer to Complaint, COUNTERCLAIM re Defendant's Jury Demand filed by AMERICAN EDUCATIONAL RESEARCH ASSOCIATION, INC., AMERICAN PSYCHOLOGICAL ASSOCIATION, INC., NATIONAL COUNCIL ON MEASUREMENT IN EDUCATION, INC.. (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/Counterclaim Defendants,
v.
PUBLIC.RESOURCE.ORG, INC.,
Defendant/Counterclaimant.

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Civil Action No. 1:14-cv-00857-CRC
PLAINTIFFS’ REPLY
MEMORANDUM IN FURTHER
SUPPORT OF MOTION TO STRIKE
DEFENDANT’S JURY DEMAND

Plaintiffs/Counterclaim Defendants, 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 Reply
Memorandum in further support of their Motion to Strike Defendant/Counterclaimant
Public.Resource.Org, Inc.’s (“Defendant’s”) Jury Demand.
PRELIMINARY STATEMENT
All parties in this case only seek equitable relief. Plaintiffs’ Complaint solely requests
injunctive relief (D.I. 1). Defendant’s counterclaim seeks only a declaration that it is not liable
for copyright infringement or contributory copyright infringement (D.I. 12). In its opposition
brief to Plaintiffs’ motion, Defendant readily and repeatedly acknowledges that the parties seek
only equitable relief. Opp. at 2, 4, 5 and 6. Under these circumstances, there is no right to a jury
trial.
Defendant nonetheless contends that its counterclaim is legal in nature, thus entitling
Defendant to demand a jury trial. Defendant’s arguments in opposition, however, are couched as

hypotheticals, are not based on the facts of this case, and mischaracterize applicable case law and
legal principles. As Defendant has no right to a jury trial, Plaintiffs respectfully request that their
Motion be granted and that Defendant’s Jury Demand be stricken.
ARGUMENT
I.

DEFENDANT’S DECLARATORY JUDGMENT
COUNTERCLAIM IS NOT A LEGAL CLAIM
This is a simple copyright infringement action. Defendant, however, relies on insurance

and patent cases that discuss the right to a jury trial in the context of a declaratory judgment
claim. Defendant asserts that these cases stand for the principle that the legal or equitable nature
of a declaratory judgment claim is determined by looking at whether Plaintiffs could have sought
legal remedies. Opp. at 4. Defendant then argues that, because Plaintiffs could have sought
damages, Defendant’s declaratory judgment claim is legal in nature. Opp. at 4. Defendant,
however, misapplies and mischaracterizes the cases it relies upon to support this proposition.
Accordingly, Defendant’s hypothetical arguments are unpersuasive.
Defendant relies on Pacific Indemnity Co. v. McDonald, 107 F.2d 446 (9th Cir. 1939) to
argue that its counterclaim is legal in nature. This, says Defendant, is because the character of a
declaratory judgment claim is determined based on the “[t]he type of claim that would have
arisen if the parties’ positions were reversed.” Opp. at 3 (emphasis added).
In Pacific Indemnity, an insurance company sought a declaration that it was not liable for
injuries caused in a car accident by its insured, McDonald. Brune was the injured passenger in
McDonald’s car.

The insurance company brought its declaratory judgment action against

McDonald and Brune, asserting that they had colluded to falsify the cause of the accident and
thereby defraud the insurer. Pac. Indem., 107 F.2d at 447. In her answer, Brune demanded a
jury trial, which the trial court denied in view of an objection raised by the insurer. Id. On

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appeal, the Ninth Circuit held that Brune had a right to a jury trial because, had she brought her
claim against the insurance company for payment on the liability policy, her suit for money
damages would have been tried at law. Id. at 448. Before this Court, however, all parties’
claims sound in equity. Defendant’s reliance on Pacific Indemnity, therefore, is misplaced.
Defendant also improperly cites another insurance case, James v. Pennsylvania General
Insurance Co., 349 F.2d 228 (D.C. Cir. 1965). Defendant relies on this case in asserting that the
“counterpart” of a declaratory judgment claim is “the equivalent claim that would have been
brought before the merger of law and equity” and that because the present action could have
“potentially involved money damages,” Defendant’s counterclaim is legal and not the
counterpart of a suit in equity. Opp. at 3-4.
The D.C. Circuit in James assessed whether the insured, James, had a right to a jury trial
where the insurance company’s action sought a declaration that it was not liable for payment on
the insurance policy. James, 349 F.2d at 230. The D.C. Circuit found that James might have had
a right to a jury trial because, 1) had he filed first, his case would have been a legal action to
recover on the automobile liability insurance policy, and 2) the insurance company would have
been able to adequately present its defense that James had fraudulently renewed the liability
policy. Id. at 231-32.
Neither Pacific Indemnity nor James is relevant to the present action. Here, Plaintiffs
initiated their action seeking only injunctive relief.

Defendant’s counterclaim seeks only

declaratory relief. Unlike in Pacific Indemnity and James, Plaintiffs could have asserted, and did
assert, their copyright infringement and contributory infringement claims against Defendant
seeking only equitable relief.

Accordingly, Defendant’s counterclaim is a counterpart of

Plaintiffs’ suit sounding in equity – for which no right to a jury trial is afforded.

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Defendant also mischaracterizes a patent case, Sanofi-Syntehlabo v. Apotex, Inc., No. 02cv-2255, 2002 U.S. Dist. LEXIS 15345 (S.D.N.Y. Aug. 20, 2002), which it claims stands for the
proposition 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.”
Opp. at 4 (internal quotation omitted). In Sanofi, the alleged infringer, Apotex, had not yet sold
its allegedly infringing product; but rather had only notified the FDA of its intention to do so. Id.
at *3-4. Thus, the patent owner, Sanofi, could not assert a claim for money damages. Id. at *20.
Rather, Sanofi had no choice but to seek only an injunction, an equitable remedy, and therefore
had no right to a jury trial. Id.
Sanofi does not stand for the principle that there is a right to a jury trial whenever a patent
holder can choose between bringing a claim at law or in equity.

The court in Sanofi

acknowledged that, while a patent owner can typically choose whether to pursue legal or
equitable remedies, there is no right to a jury trial if the patent owner seeks only equitable
remedies. Id. at *11 (discussing the Federal Circuit’s reasoning in In re Lockwood, 50 F.3d 966
(Fed. Cir. 1995), vacated sub nom. Am. Airlines, Inc. v. Lockwood, 515 U.S. 1182 (1995) that the
patent holder’s choice of remedy was the deciding factor in whether a jury trial is available).
Defendant’s opposition brief, Opp. at 4, also asserts that “[a]lthough 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.” Defendant provides
no support for this statement. While Defendant’s statement follows its discussion of Sanofi, the
court’s analysis in Sanofi revolved around the fact that a damages claim was not available.
Sanofi clearly does not support Defendant’s statement. Thus, Defendant misconstrues the facts
and holding of Sanofi in order to support its arguments.

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Defendant’s opposition brief, Opp. at 3, further contends that the issues of copyright
ownership and fair use give rise to a jury trial. Defendant, however, mischaracterizes the two
cases it relies on for this argument, both of which are irrelevant to the present facts. Neither
Langman Fabrics v. Graff Californiawear, Inc., 160 F.3d 106 (2d Cir. 1998) nor Harper & Row
Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985) supports Defendant’s proposition
that it has a right to a jury trial because the issues in this case “depend on questions of historical
fact that are ordinarily heard by a jury.” Opp. at 3 (internal citations omitted).
In Langman Fabrics, the court determined whether, under the work-for-hire doctrine, the
plaintiff Langman Fabrics was the copyright owner of the fabric design which formed the basis
for the lawsuit. Langman Fabrics, 160 F.3d at 111. Langman Fabrics did not involve any
claims or counterclaims for declaratory relief, and at no point in its opinion did the Second
Circuit state that copyright ownership is a legal issue which would support the right to a jury
demand. In fact, at least one court has held that the issue of copyright ownership does not give
rise to a jury trial when the parties seek only equitable remedies. Taylor Corp. v. Four Season
Greetings, LLC, 403 F.3d 958, 968-69 (8th Cir. 2005) (holding that there was no right to a jury
during either the liability or ownership phase of a copyright infringement trial, where the
copyright holder sought only a permanent injunction).
Similarly, Harper & Row Publishers did not involve a declaratory judgment counterclaim
and in its opinion the Supreme Court did not address the issue of the right to a jury trial.1 Harper
& Row Publishers, 471 U.S. at 541-42, 560 (determining whether verbatim copying from a
public figure’s manuscript constituted fair use). Neither Langman Fabrics nor Harper & Row

1

In prior proceedings, the district court judge found that the use of the copyrighted material
constituted copyright infringement after a six-day bench trial. Harper & Row Publishers, 471
U.S. at 560.
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Publishers supports the proposition that issues of copyright ownership and fair use are legal in
nature, giving rise to the right of a jury trial.
Further, Defendant raises the issues of copyright ownership and fair use as affirmative
defenses. Affirmative defenses, however, do not give an accused infringer the right to a jury trial
where the intellectual property owner seeks only equitable relief. Tegal Corp. v. Tokyo Elec.
Am., Inc., 257 F.3d 1331, 1341 (Fed. Cir. 2001) (stating that where the only remedy sought by
the patent owner is an injunction, the accused infringer has no right to a jury trial if all it asserts
is affirmative defenses and no counterclaims).
The cases Defendant relies upon fail to support its argument that its counterclaim for
declaratory judgment of non-infringement is legal in nature and thus provides Defendant with the
right to a jury trial. Plaintiffs, asserting claims for copyright infringement and contributory
infringement, seek only equitable relief. Defendant, therefore, has no right to a jury trial.
II.

DEFENDANT HAS NO RIGHT TO A JURY TRIAL
BECAUSE OF THE EQUITABLE NATURE OF THE
PARTIES’ CLAIMS, NOT BECAUSE OF THE FILING
ORDER OF THE PARTIES’ CLAIMS
Plaintiffs rely on the equitable nature of their claims and Defendant’s counterclaim, not

on the filing order of the parties’ claims, to support their argument that Defendant does not have
a right to a jury trial. In Defendant’s opposition brief, Opp. at 5, it urges that the party who sues
first cannot deprive the opposing party of its right to a jury trial, a general proposition with which
Plaintiffs do not disagree. However, none of the cases Defendant cites are relevant to the present
dispute. Plaintiffs’ Motion to Strike Defendant’s Jury Demand is not based on the order in
which the parties’ claims were filed.
For example, Defendant relies on Beacon Theatres v. Westover, 359 U.S. 500 (1959), an
antitrust case, to support its filing order argument. The court in Beacon Theatres held that a

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defendant who asserted legal counterclaims against the plaintiff who initiated the declaratory
judgment action had a right to a jury trial. Beacon Theatres, 359 U.S. at 504. Beacon Theatres
does not apply here, however, because it was the legal nature of the defendant’s counterclaims,
which included a request for treble damages under the antitrust laws, which gave the defendant
the right to a jury trial. In the present action, on the other hand, Defendant’s counterclaim is not
legal in nature. Defendant requests only declaratory relief. None of the parties request monetary
damages.
Similarly, Defendant cites Pacific Indemnity, supra., 107 F.2d at 449, Opp. at 5, to
support its filing order argument.

However, as discussed above, Pacific Indemnity is not

instructive here because Plaintiffs had the option to, and did, seek only equitable relief in
asserting their copyright infringement and contributory copyright infringement claims.
It is not, as Defendant contends, Opp. at 5, Plaintiffs’ “artful pleading” or the fact that
Plaintiffs initiated this action before Defendant filed its declaratory judgment counterclaim
which precludes Defendant from demanding a jury trial.2 Rather, Defendant has no right to a
jury trial because all parties to this action seek only equitable relief. As no party asserts a legal
claim and the only remedies sought are equitable in nature, there is no right to a jury trial. Luria
v. United States, 231 U.S. 9, 27-28 (1913); see also Parsons v. Bedford, 28 U.S. 433, 446-47
(1830).
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2

Even if the parties’ roles were reversed, there would be no right to a jury trial. If Defendant
had filed its declaratory judgment claim first and both parties requested the same relief as in the
present case, there still would be no legal claims. As all of the claims would be equitable in
nature, there would be no right to a jury trial.
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CONCLUSION
Plaintiffs seek only equitable relief in this case. Defendant’s counterclaim seeks only
declaratory relief. No party requests money damages. As the relief sought in this action is
entirely equitable in nature, there is no right to a jury trial. Plaintiffs therefore respectfully
request that Defendant’s Jury Demand be stricken.
Respectfully submitted,
OBLON, SPIVAK, McCLELLAND,
MAIER & NEUSTADT,LLP
Dated: September 18, 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.

{431384US, 10929803_1.DOCX}

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CERTIFICATE OF SERVICE
I hereby certify that on September 18, 2014, PLAINTIFFS’ REPLY MEMORANDUM
IN FURTHER SUPPORT OF MOTION TO STRIKE DEFENDANT’S JURY DEMAND
was 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