COHEN v. USA

Filing 50

PUBLISHED OPINION granting in part and denying in part 37 Motion for Summary Judgment. Status Report due by 8/20/2010. Signed by Chief Judge Emily C. Hewitt. (md3)

C O H E N v. USA

D o c . 50

In the United States Court of Federal Claims
N o . 07-154 C (E -F ile d : August 9, 2010)

) N O R M A N H. COHEN, Ed.D., P l a in tif f , v. T H E UNITED STATES, Defendant. ) S u m m a ry Judgment; Copyright R e g is tra tio n ; Conveyance of ) E x c lu s iv e Rights; Standing to ) Bring S u it for Copyright ) In f rin g e m e n t; Beneficial ) Ownership; Continuing Wrong D o c trin e Unavailable; Tolling ) P r o v i s io n ; 28 U.S.C. § 1498(b); ) C o n tin u in g Presence of ) In f rin g in g Materials Cached on ) th e Internet )

J o n a th a n M. Cohen, Philadelphia, PA, for plaintiff. Susan L.C. Mitchell, with whom were Tony West, Assistant Attorney General, and John J. Fargo, Director, Intellectual Property Section, Commercial Litigation Branch, Civil D iv is io n , United States Department of Justice, Washington, DC, for defendant. David M. R u d d y, United States Department of Justice, Washington DC, of counsel.

O P IN I O N AND ORDER H E W IT T , Chief Judge D r. Norman H. Cohen (plaintiff or Dr. Cohen) brought an action for copyright in f rin g e m e n t against the United States government, acting through the Federal E m e rg e n c y Management Agency (United States, FEMA, government or defendant). Civil Action Complaint (Complaint or Compl.), Docket Number (Dkt. No.) 1, ¶¶ 5, 6, 10. Plaintiff contends that the United States infringed his copyright in at least twelve works w h e n it displayed the works on FEMA's website, making the works available to the

Dockets.Justia.com

p u b lic. Id. ¶¶ 5, 10-12. The government moves for partial summary judgment, co n tend ing that plaintiff failed to register one of the works 1 and that plaintiff's c o n v e ya n c e of certain exclusive rights deprived him of standing to bring suit. I. B a c k g ro u n d

N o w before the court are United States' Motion for Partial Summary Judgment (d e f en d a n t's Motion or Def.'s Mot.), Docket Number (Dkt. No.) 37, filed February 25, 2 0 1 0 ; Plaintiff's Response [in] Opposition to United States' Motion for Partial Summary J u d g m e n t (plaintiff's Response or Pl.'s Resp.), Dkt. No. 42, filed April 5, 2010; and U n ited States' Reply to Plaintiff's Opposition to its Motion for Partial Summary J u d g m e n t and Supplemental Appendix (defendant's Reply or Def.'s Reply), Dkt. No. 47, filed May 6, 2010. Defendant attached an Appendix (defendant's Appendix or Def.'s A p p .) in support of its Motion. Plaintiff attached an Appendix (plaintiff's Appendix or P l.'s App.) in support of its Response. T h e government moves for partial summary judgment on three grounds. Def.'s M o t. 1. First, the government contends that Dr. Cohen did not obtain a certificate of re g is tra tio n from the Copyright Office for the article, "The Principles of Adult Mentoring S c a le " 2 (The Principles Article). Def.'s Mot. 1, 3-4. Second, the government contends th a t Dr. Cohen does not have standing to sue for copyright infringement because he a ss ig n e d exclusive rights to Human Resource Development Press, Inc. (HRD Press) and w a s therefore no longer the copyright owner in four of the works: The Principles Article; T h e Principles Article, Leader's Guide; The Manager's Pocket Guide to Effective M e n to rin g ; and The Mentee's Guide to Mentoring (collectively, the HRD Press Works). Id. at 1, 5-6, 8. Third, the government contends that plaintiff's right to recovery should b e limited to "damages incurred from direct infringement by the government committed Section 411(a) requires that a plaintiff register a work before bringing a claim for copyright infringement. 17 U.S.C. § 411(a) (2006). A certificate of registration documents satisfaction of this requirement. Id. at (b)(1). The word "Scale" in the title was later replaced by the word "Inventory," thereby changing the title to "Principles of Adult Mentoring Inventory," which was shortened to and frequently referred to as "PAMI." Plaintiff's Response [in] Opposition to United States' Motion for Partial Summary Judgment (plaintiff's Response or Pl.'s Resp.) Docket Number (Dkt. No.) 42, 11 n.7. Plaintiff refers to the work as "Principles of Adult Mentoring Inventory," and defendant refers to the same work as "The Principles of Adult Mentoring Scale." Compare id. at 10-11, with United States' Motion for Partial Summary Judgement (defendant's Motion or Def.'s Mot.), Dkt. No. 37, 3-5. The court refers to the work as The Principles Article throughout its Opinion and Order. 2
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b e tw e e n March 9, 2004 and March 15, 2005." Id. at 1, 10-12. The court has jurisdiction o v e r this action pursuant to 28 U.S.C. § 1498(b), which provides that a claim of copyright in f rin g e m e n t against the United States shall be brought before the United States Court of F e d e ra l Claims (CFC). 28 U.S.C. § 1498(b) (2006). The statute of limitations governing th is action is three years. Id. The action is timely because the acts complained of o c c u rre d within three years of March 9, 2007, the date the Complaint was filed. See C o m p l. A. C o p yrig h t Registration in The Principles Article

T h e United States asserts that Dr. Cohen failed to obtain a certificate of re g is tra tio n from the Copyright Office for The Principles Article and therefore cannot b rin g a suit of copyright infringement with regard to this work. Def.'s Mot. 3-5. The a rtic le is included in a compilation titled "New Directions for Adult and Continuing E d u c a tio n " and is published by Jossey-Bass Inc., Publishers (Jossey-Bass). Id. at 3-4. Jossey-Bass holds the copyright in the compilation as a collective work. Id. at 4. The p a rtie s agree that Jossey-Bass has a valid copyright in the compilation, but the parties d is a g re e as to whether plaintiff has a registered copyright in The Principles Article. Id.; P l.'s Resp. 5. Defendant asserts that plaintiff failed to register The Principles Article and is therefore barred from bringing suit. Def.'s Mot. 4 (citing Def.'s App. A7-A9 (C o m p ila tio n Registration Certificate), A58-A59 (Deposition of Dr. Cohen)). Plaintiff's position appears to be that a separate registration for The Principles A rtic le is unnecessary because it is part of his doctoral dissertation for which he obtained a certificate of registration from the Copyright Office. See Pl.'s Resp. 4, 11-12. Plaintiff m a in t a in s that the Principles Article is included within his dissertation, and that because h is dissertation is protected by copyright, the Principles Article is also protected. Id. at 45 . In support of his position, plaintiff submitted a certificate of registration from the C o p yrig h t Office for his doctoral dissertation, "Development and Validation of the P rin ciples of Adult Mentoring Scale for Faculty Mentors in Higher Education." Pl.'s A p p . A77-A78 (Dissertation Registration Certificate); see also Pl.'s App. A775 (D e p o sitio n of Dr. Cohen). The dissertation was submitted to the Copyright Office for reg istratio n , and the Copyright Office issued a certificate of registration for plaintiff's d is s e rta tio n with an effective date of October 22, 1993. Pl.'s App. A77-A78 (Dissertation R e g is tra tio n Certificate). During his March 18, 2009 deposition, plaintiff submitted the c e rtif ic a te of registration for his doctoral dissertation as Cohen-Exhibit-15. Pl.'s App. A 6 0 9 , A775 (Deposition of Dr. Cohen). Neither party has submitted a copy of plaintiff's d iss e rta tio n or a copy of the article in question. See Def.'s App. passim; Pl.'s Resp. ii (lis tin g the table of contents for plaintiff's appendix); Pl.'s App. passim.

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B.

C o p yrig h t Ownership in the HRD Press Works

T h e government asserts that plaintiff lacks standing to sue for infringement b ec au se he is not the copyright owner of the HRD Press Works. Def.'s Mot. 1, 5-6. In p a rticu lar , the government contends that, because Dr. Cohen assigned exclusive rights to p u b lis h and market the works to HRD Press, Dr. Cohen no longer has standing to bring a c laim of copyright infringement. Id. at 7-9. Plaintiff signed publishing contracts with H R D Press for each of the HRD Press Works. Pl.'s App. A101-A113 (HRD Press C o n tra c ts ); see also Def.'s App. A13-A18 (HRD Press Contracts). The relevant terms of th e contract for each of the four HRD Press Works are identical: plaintiff conveys "the e x c lu s iv e right to publish and market the Work" to HRD Press, e.g., Pl.'s App. A101, ¶1, A 1 0 5 ¶1 (HRD Press Contracts), in exchange for royalty payments, e.g., Pl.'s App. A102, ¶ 7 , A106 ¶7 (HRD Press Contracts). The government asserts that, because the exclusive rig h ts to reproduce, distribute and display the works were conveyed to HRD Press, only H R D Press has standing to sue for infringement of these rights. Def.'s Mot. 9-10. Plaintiff asserts that defendant has conflated legal ownership of a copyright with b e n e fic ia l ownership of a copyright. Pl.'s Resp. 14 n.10. Plaintiff asserts that he is the b e n e f ic ia l owner of the copyright because he receives royalty payments from HRD Press. Id. at 1, 5; see, e.g., Pl.'s App. A102, ¶7, A106 ¶7 (HRD Press Contracts) (stating that p la in tif f will receive royalty payments from HRD Press for the HRD Press Works). Plaintiff contends that he has standing to sue for infringement as a beneficial owner. Pl.'s R e sp . 14, 17. C. A v a ila b ility of Damages

P la in tif f filed suit against the government on March 9, 2007. Def.'s Mot. 10; C o m p l. The government contends that, because 28 U.S.C. § 1498 places a three-year lim ita tio n on recovery, plaintiff is unable to recover damages for any infringement that o c c u rre d prior to March 9, 2004. Def.'s Mot. 10-11. Further, the government asserts that " a ll of the accused materials were removed from FEMA's website" as of March 15, 2004. Id. at 11. The government contends that plaintiff's recovery is therefore limited to the s e v e n -d a y period, March 9 to March 15, 2004. Id. The government further contends that th e tolling provision of 28 U.S.C. § 1498 is inapplicable because Dr. Cohen never made " a written claim for compensation" that satisfies the requirements of the statute. Id. at 121 3 ; see 28 U.S.C. § 1498(b) (tolling the statute of limitations if "a written claim for co m p en satio n " is made to the agency or department responsible for the claim). P la in tif f asserts that, although FEMA took down the materials from its website on M a r c h 15, 2004, this was insufficient to remove the materials from the internet, because 4

they were still readily accessible via cached websites. Pl.'s Resp. 17-18. Further, p la in tif f asserts that the infringing works on the internet were deliberately posted and m a in ta in e d every second of every day--which is different from the "ephemeral act of in f rin g e m e n t in the unauthorized broadcast of a 3-minute song, a 2[-]hour movie, or u n a u th o riz e d sale of a book." Id. at 18. Plaintiff contends that the written notice he sent to FEMA on October 17, 2005, s e e Def.'s App. A2 (Oct. 17 FEMA Letter), constitutes "a written claim for c o m p e n s a tio n " such that any limitations period should be tolled. Pl.'s Resp. 20 n.16; see 2 8 U.S.C. § 1498(b). On October 17, 2005 plaintiff wrote a letter to FEMA, the text of w h ich states, in full: It has been many weeks since you said you would speak to Ms. Zaidel and g e t back to me about this matter. I never heard from you. Please let me k n o w if I have to sue FEMA to get a response. D e f .'s App. A2 (Oct. 17 FEMA Letter). Jordan Fried (Mr. Fried), Associate General C o u n s e l for Litigation, responded to plaintiff on October 25, 2005, in a letter which sta tes , in relevant part: T h a n k you for your recent letter threatening to bring suit against the Federal E m e rg e n c y Management Agency. As you recall, when you called me I had n o background on the matters of concern to you. As we further discussed, yo u had been working with Edward Broyles of this office to address your c o n c ern s . I advised Mr. Broyles of your call and the particular issues raised b y you, and referred the matter back to him. D e f .'s App. A3 (Oct. 25 FEMA Letter). Plaintiff replied to Mr. Fried on November 1, 2 0 0 5 , stating, in relevant part: [ I]n my letter, I asked you if I need to sue FEMA to get a response to my in q u iry, as I cannot seem to get one any other way. Your interpretation of th a t question as a threat seems to say that FEMA has no intention of a m ic a b ly responding to my inquiry regarding a clear cut case of copyright in f rin g e m e n t. If I am wrong about this, please advise me immediately. D e f .'s App. A4 (Nov. 1 FEMA Letter). FEMA's response, dated January 26, 2006, from E d w a rd Broyles (Mr. Broyles), Acting Associate General for General Law, FEMA Office o f General Counsel, states in relevant part:

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[ T ] h e use by FEMA [of the HRD Press Works] appears to be within the F a ir Use Doctrine. Notwithstanding the above, I recognize that the course materials should h a v e been removed from the website at the conclusion of the course, and a p o lo g iz e for the omission. The materials have been removed. D e f .'s App. A5-A6 (Jan. 26 FEMA Letter). Plaintiff contends that this communication is s u f f ic ie n t to toll the statute of limitations from October 17, 2005 until January 26, 2006. Pl.'s Resp. 20 n.16. II. L e g a l Standards A. Summary Judgment

U n d er Rule 56 of the Rules of the Court of Federal Claims (RCFC), summary ju d g m e n t is appropriate where "the pleadings, the discovery and disclosure materials on f ile , and any affidavits show that there is no genuine issue as to any material fact and that th e movant is entitled to judgment as a matter of law." 3 RCFC 56(c)(1); see Anderson v. L ib e rty Lobby, Inc. (Anderson), 477 U.S. 242, 247-48 (1986) (reviewing Rule 56(c) of th e Federal Rules of Civil Procedure (FRCP)); Cross Med. Prods., Inc. v. Medtronic S o f a m o r Danek, Inc., 424 F.3d 1293, 1302 (Fed. Cir. 2005) (same). A fact is material if it might significantly affect the outcome of the litigation. Anderson, 477 U.S. at 248. A d ispu te about a material fact is genuine "if the evidence is such that a reasonable jury c o u ld return a verdict for the nonmoving party." Id; see Matsushita Elec. Indus. Co., v. Z e n ith Radio Corp. (Matsushita), 475 U.S. 574, 587 (1986) (stating that there is no g e n u in e dispute "[w]here the record taken as a whole could not lead a rational trier of fact to find for the non-moving party").

The RCFC generally mirror the Federal Rules of Civil Procedure (FRCP). RCFC 56 rules comm. notes (2002) ("The subdivision structure of RCFC 56 was reordered to more closely conform to FRCP 56."); see Flowers v. United States, 75 Fed. Cl. 615, 624 (2007) ("RCFC 56 is patterned on Rule 56 of the [FRCP] and is similar in language and effect."); see also C. Sanchez & Son, Inc. v. United States, 6 F.3d 1539, 1541 n.2 (Fed. Cir. 1993) ("The [RCFC] generally follow the [FRCP]. [RCFC] 56(c) is, in pertinent part, identical to [FRCP] 56(c)."). Therefore, the court relies on cases interpreting FRCP 56 as well as those interpreting RCFC 56. Champagne v. United States, 35 Fed. Cl. 198, 205 n.5 (1996) ("In general, the rules of this court are closely patterned on the [FRCP]. Therefore, precedent under the [FRCP] is relevant to interpreting the rules of this court, including Rule 56."). 6

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In considering such a motion, the court will, absent persuasive reason to the c o n tra ry, deem the material facts claimed and adequately supported by the m o v in g party to be established, except to the extent that such material facts a re controverted . . . . RCFC 56(c)(1). Further, under RCFC 56, the court must draw all inferences from the f a cts before it in the light most favorable to the nonmoving party. Matsushita, 475 U.S. at 5 8 7 ; Mann v. United States, 334 F.3d 1048, 1050 (Fed. Cir. 2003) (citing Anderson, 477 U .S . at 255). B. 1. C o p yrig h t Infringement C o p yrig h t Registration

T h e Copyright Act requires an author to register the work prior to bringing an a c tio n for infringement. 17 U.S.C. § 411(a) (2006) ("no action for infringement of the c o p yrig h t in any United States work shall be instituted until preregistration or registration o f the copyright claims has been made in accordance with this title"). An author is re q u ire d to have a certificate of registration from the Copyright Office before filing a suit f o r copyright infringement. Id. The owner of the copyright has the burden of production w ith regards to the certificate of registration, which is presumptively valid and is prima f a c ie evidence of a valid copyright. Id. § 411(b)(1); Herbert v. United States, 36 Fed. Cl. 2 9 9 , 303 (1996); see 17 U.S.C. § 410(c). The Copyright Act protects both original works and compilations of original w o rk s . 17 U.S.C. § 103(a). The copyright in a compilation or derivative work extends only to the m a te ria l contributed by the author of such [derivative] work, as d is tin g u is h e d from the preexisting material employed in the work, and does n o t imply any exclusive right in the preexisting material. The copyright in s u c h work is independent of, and does not affect or enlarge the scope, d u ra tio n , ownership, or substance of, any copyright protection in the p re e x istin g material. Id . § 103(b). The copyright in a compilation is therefore separate and distinct from the c o p yrig h t in the originals works comprising the compilation. See id. A certificate of re g is tra tio n in the compilation does not affect the existence of, or lack of, a certificate of re g is tra tio n in any of the underlying original works. See id. The compilation and the u n d e rlyin g works are separate, and the author of either work must have a certificate of 7

re g is tra tio n in the work before bringing suit for infringement of that work. See id. § § 103(b), 411(a). A certificate of registration in the compilation allows the owner of the c o m p ila tio n to bring an infringement suit based on the compilation work, but it would not b e sufficient in and of itself to bring an infringement suit based on any of works the co m p ilatio n comprises. See id. § 103(b). 2. C o p yrig h t Ownership

T h e owner of a copyright has the exclusive right to reproduce the work, prepare d e riv a tiv e works, distribute copies to the public and to perform and display the work. Id. § 106. Ownership of a copyright, or of any of the exclusive rights, may be transferred in whole or in part. Id. § 201(d). If the owner of a copyright transfers any of the ex clus ive rights granted by § 106, the protections and remedies afforded the owner are a ls o transferred. Id. § 201(d)(2) ("The owner of any particular exclusive right is entitled, to the extent of that right, to all the protection and remedies accorded to the copyright o w n e r by [the Copyright Act]."). "Section 501 gives the legal or beneficial owners of any of the [17 U.S.C. §]106 e x c lu s iv e rights the power to sue for infringement." Campbell v. Bd. of Trs. of Leland S ta n f o rd Junior Univ., 817 F.2d 499, 504 (9th Cir. 1987); see 17 U.S.C. § 501(b) ("The le g a l or beneficial owner of an exclusive right under a copyright is entitled, subject to the re q u ire m e n ts of [17 U.S.C. §]411, to institute an action for any infringement of that p a rtic u la r right committed while he or she is the owner of it."). Both the beneficial owner a n d the legal owner of the copyright have standing to sue for infringement. 17 U.S.C. § 501(b); Bandai Am. Inc. v. Bally Midway Mfg. Co., 775 F.2d 70, 73-74 (3d. Cir. 1985). A beneficial owner is someone with an economic interest in the copyright. Cortner v . Israel (Cortner), 732 F.2d 267, 270-71 (2d Cir. 1984). A beneficial owner may bring a n infringement action to protect this economic interest. See id. (finding that authors of a w o rk had standing to sue for infringement as beneficial owners after conveying "sole and e x c lu s iv e " rights to defendant in exchange for royalties). An author who has conveyed e x c lu s iv e rights in a work in exchange for royalty payments is the beneficial owner of the w o rk . Cortner, 732 F.2d at 270-71; see Moran v. London Records, Ltd., 827 F.2d 180, 1 8 3 (7th Cir. 1987) (discussing the legislative history behind 17 U.S.C. § 501(b)). In the c o n tex t of copyright, the cases define a beneficial owner as the party who receives royalty p a ym e n ts for the work. See, e.g., Moran, 827 F.2d at 183 ("[I]t is significant that the e x a m p le Congress [gave of a beneficial owner] was that of an author who assigned his w o rk in exchange for royalties . . . ."); Cortner, 732 F.2d 270-71; Fantasy, Inc. v. Fogerty (F a n ta sy), 654 F. Supp. 1129, 1131 (N.D. Cal. 1987) (defining a beneficial owner as an a u th o r who has parted with legal title in exchange for royalty payments). An author who 8

re c eiv e s royalty payments for the work therefore has standing to bring an infringement s u it as a beneficial owner. See 17 U.S.C. § 501(b); Cortner, 732 F.2d 270-71; Fantasy, 6 5 4 F. Supp. at 1131. C. L im its of Recovery

A n action by a copyright owner for infringement against the United States may be b ro u g h t exclusively at the CFC and must be brought within three years of the inf rin g em en t. 28 U.S.C. § 1498(b). E x c e p t as otherwise provided by law, no recovery shall be had for any inf rin g em en t of a copyright covered by this subsection committed more th a n three years prior to the filing of the complaint or counterclaim for in f rin g e m e n t in the action, except that the period between the date of receipt o f a written claim for compensation by the Department or agency of the G o v e rn m e n t or corporation owned or controlled by the United States, as the c a se may be, having authority to settle such claim and the date of mailing by th e Government of notice to the claimant that his claim has been denied sh all not be counted as part of the three years, unless suit is brought before th e last-mentioned date. Id . A copyright owner can recover damages for infringement only for those acts that o c c u rre d within three years of the filing of the claim unless the copyright owner is entitled to the benefit of the tolling provision in the statute. Id. The statute tolls the recovery p e rio d if the copyright owner files "a written claim for compensation" with the d e p a rtm e n t or agency that is responsible for settling the claim. Id. T h e court has found no case interpreting 28 U.S.C. § 1498. However, the tolling p r o v i sio n in 35 U.S.C. § 286, which is applicable to patents, contains language that is substantively identical to the tolling provision in 28 U.S.C. § 1498(b). Compare 35 U .S .C . § 286 (2006) (tolling the statute of limitation if the plaintiff submits "a written c laim for compensation [to] the department or agency of the Government having authority to settle such claim"), with 28 U.S.C. § 1498(b) (tolling the statute of limitations if the p la in tif f submits "a written claim for compensation [to] the Department or agency of the G o v e rn m e n t . . . having authority to settle such claim"). Section 286 has been interpreted to require notice that is "sufficiently detailed to afford the Government a realistic o p p o rtu n ity to consider and settle the claim." Custer v. United States, 224 Ct. Cl. 140, 6 2 2 F.2d 554, 557-58 (1980); see also Motorola, Inc. v. United States, 13 Cl. Ct. 420, 428 (1 9 8 7 ) (requiring that written claim "must be calculated to make a Government officer rea so n ab ly aware that a claim is being made"). 9

T h e applicable statute of limitations is also affected by the continuing wrong d o c trin e , a doctrine that has been accepted by some circuits but rejected by others.4 See M A I Basic Four, Inc. v. Basis, Inc., 962 F.2d 978, 987 n.9 (10th Cir. 1992) (noting that th e United States Court of Appeals for the Seventh Circuit (Seventh Circuit) applies the c o n tin u in g wrong doctrine to copyright infringement, but that the United States Court of A p p e a ls for the Second Circuit (Second Circuit) and the United States Court of Appeals f o r the Sixth Circuit (Sixth Circuit) do not); Wechsberg v. United States, 54 Fed. Cl. 158, 1 6 1 (2002). If copyright infringement is a continuing wrong, the statute of limitations b e g in s to run from the date of the last infringing act, and a complaint filed within the lim ita tio n s period will encompass the entire period of infringement--regardless of when th e infringement started. See Taylor v. Meirick, 712 F.2d 1112, 1118-19 (7th Cir. 1983). In Taylor, the Seventh Circuit applied the continuing wrong doctrine to copyright in f rin g e m e n t and determined that as long as the suit was brought within the statute of lim ita tio n s period from the last infringing act, plaintiff could recover damages for the " e n tire duration of the alleged violation." Taylor, 712 F.2d at 1118-19. If copyright in f rin g e m e n t is not a continuing wrong, separate statutes of limitations periods run from e a ch wrongful act, and recovery is limited to those acts as to which the limitations period h a s not run. See Taylor, 712 F.2d at 1118-19; cf. Bridgeport Music, Inc. v. Diamond T im e , Ltd. (Bridgeport), 371 F.3d 883, 890-91 (6th Cir. 2004). In Bridgeport, the Sixth C irc u it rejected the application of the continuing wrong doctrine to copyright in f rin g e m e n t and held that any act of infringement that was outside the limitations period w a s time barred. Bridgeport, 371 F.3d at 890-91 (citing Makedwde Pub. Co. v. Johnson, 3 7 F.3d 180, 182 (5th Cir. 1994)). T h e CFC rejected the application of the continuing wrong doctrine to copyright inf rin g em en t under § 1498(b). See Wechsberg, 54 Fed. Cl. at 161. The Wechsberg court b a se d its holding "on the plain language of Section 1498(b), the strict construction of w a iv e rs of sovereign immunity that governs this Court, and the weight of precedent under g e n e ra l copyright law" and limited recovery to the specific acts of infringement that o c c u rre d within the three-year limitations period. Id. (internal citations omitted). The c o u rt finds the reasoning of the Weschberg court persuasive, and declines to apply the c o n tin u in g wrong theory to plaintiff's claim. III. D is c u ss io n A.
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C o p yrig h t Registration in The Principles Article

The United States Court of Appeals for the Federal Circuit has not ruled on the continuing wrong doctrine with respect to copyright infringement. 10

A s its first ground for summary judgment, the government asserts that Dr. Cohen n e v e r registered The Principles Article and that, because registration is a prerequisite to in s titu tin g a claim of infringement, plaintiff's suit is barred. Def.'s Mot. 3-5. Plaintiff re lies on the contention that The Principles Article is part of his dissertation and is th e re f o re protected by the registration certificate he received from the Copyright Office in 1 9 9 3 for his doctoral dissertation. Pl.'s Resp. 11 n.7. In support of his position, plaintiff s u b m itte d the certificate of registration, effective October 22, 1993, for his doctoral d is s e rta tio n , "Development and Validation of the Principles of Adult Mentoring Scale for F a c u lty Mentors in Higher Education." 5 Pl.'s App. A77-A78 (Dissertation Registration C e rtific a te) . Plaintiff's certificate of registration serves as prima facie proof of a valid c o p yrig h t in his dissertation. 17 U.S.C. § 410(c). Plaintiff asserts that The Principles A rtic le is included in his doctoral dissertation for which copyright registration was c o m p le te in 1993 and that copyright registration is therefore complete. Pl.'s Resp. 11. In considering a motion for summary judgment, the court must consider facts in th e light most favorable to the non-moving party, here, Dr. Cohen. See Matsushita, 475 U .S . at 587. Defendant has not provided any material facts contained in "pleadings, the d isc o v e ry and disclosure materials on file, [or] any affidavits," RCFC 56(c), to dispute p la in tif f 's contention that The Principles Article is included as part of plaintiff's doctoral d is s e rta tio n and is therefore protected by plaintiff's 1993 copyright registration. Viewing th e evidence in the light most favorable to plaintiff, the court finds that the government is u n a b le to demonstrate that it is entitled to judgment as a matter of law. For the foregoing re a so n s , the government's Motion regarding copyright registration of The Principles A rtic le is DENIED. B. C o p yr ig h t Ownership in the Four Works Published by HRD Press

A s its second ground for summary judgment, the government asserts that, because p la in tif f conveyed exclusive rights to market and distribute the HRD Press Works to HRD P r e ss , plaintiff does not have standing to sue for copyright infringement. Def.'s Mot. 51 0 . Plaintiff asserts that he has standing to sue as a beneficial owner. Pl.'s Resp. 13-17. Section 501 provides that both the legal owner and the beneficial owner have standing to su e for copyright infringement. 17 U.S.C. § 501(b) ("The legal or beneficial owner . . . is e n title d . . . to institute an action for any infringement . . . ."). Beneficial owners include a u th o rs who have conveyed exclusive rights in their work in exchange for royalty p a ym e n ts . See Cortner, 732 F.2d 270-71. In Cortner, the Second Circuit determined that Plaintiff also produced a "Letter of Agreement" that he signed with Jossey-Bass in which he retained all legal rights to the materials to be published. Pl.'s Resp. 11 (citing Pl.'s App. A793-A795 (Jossey-Bass Contract)). 11
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th e plaintiffs' "right to royalties, although contingent on [the defendant's] exploitation of th e [work], gave [the plaintiffs] a sufficient beneficial interest in the copyright to give [ th e m ] standing to seek judicial relief under the copyright law against infringement." Id. a t 270-71. T h e publishing contracts signed by Dr. Cohen and a representative of HRD Press c o n v e ys to HRD Press the exclusive rights "to publish and market the [HRD Press W o r k s ] . . . at its sole discretion," Pl.'s App. A101, A 105, A108, A111 (HRD Press C o n tra c ts ), in exchange for royalty payments, Pl.'s App. A102, A106, A109, A112 (HRD P r e ss Contracts). Specifically, Dr. Cohen received 15% of HRD Press's net receipts and 1 7 .5 % of net receipts over $200,000, plus 50% of gross receipts for licensed uses and tra n sla tio n rights. Id. at A102, A106, A109, A112. Dr. Cohen therefore retained b e n e f icia l ownership of the HRD Press Works when he transferred exclusive rights to H R D Press in exchange for a percentage of royalties based on sales and license fees. See id . at A101-A114 (HRD Press Contracts). In order to prevail on its motion for summary judgment the government must d e m o n s tra te that plaintiff has no beneficial or legal interest in the works in question. See 1 7 U.S.C. § 501(b). Here, the government has put forward no evidence to dispute that Dr. C o h e n is a beneficial owner of the HRD Press Works.6 See Def.'s App. passim. Because d e f en d a n t has failed to provide material facts contained in "pleadings, the discovery and d isc lo su re materials on file, [or] any affidavits," RCFC 56(c), the government is unable to d e m o n s tr a te that it is entitled to judgment as a matter of law. For the foregoing reasons, th e government's Motion regarding plaintiff's standing to sue for copyright infringement w ith regard to the HRD Press Works is DENIED.

Defendant also argues that "Dr. Cohen had to seek permission from HRD Press to publish a derivative work, which by definition would be based on the same subject matter as the original work." Def.'s Mot. 9-10. The right to make a derivative work and standing to sue for infringement of an original work are separate, divisible rights. See 17 U.S.C. § 103(b). Section 501 affords both the beneficial and the legal owner standing to sue. Id. § 501(b). The right to make a derivative work is held by the legal owner of that right. See id. § 103(b). Accordingly, an author who is the beneficial owner of a work has standing to sue for infringement, see id. § 501(b), even if the author does not have the right to make a derivative work. Defendant's argument--that Dr. Cohen does not have standing to sue for infringement because he would not have the right to publish a derivative work--confuses and conflates two separate and distinct rights of an author. Defendant's assertion that Dr. Cohen would be unable to publish a derivative work may or may not be correct but, in either case, does not affect plaintiff's standing to sue for infringement of the initial work as the beneficial owner. See id. (giving standing to sue to both the legal owner and the beneficial owner). 12

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C.

L im its of Recovery

T h e government contends that plaintiff's recovery is limited by law to the period f ro m March 9 to March 15, 2004, Def.'s Mot. 10-11, and that damages for infringement th a t occurred prior to March 9, 2004 are barred by the three-year statute of limitations, id. (c itin g 28 U.S.C. § 1498(b)). For the reasons stated above in Part II.C, the court finds th a t the government is entitled to summary judgment regarding its contention that the co n tin u ing wrong doctrine is inapplicable to a claim under 28 U.S.C. § 1498. The court th e re f o re agrees with defendant that, unless the statute of limitations is tolled, plaintiff is e n title d only to those damages for infringement that occurred within the three years prior to the filing of plaintiff's suit, March 9, 2007. Plaintiff contends that the tolling provision of 28 U.S.C. § 1498(b) should apply to th e period from October 17, 2005 to January 26, 2006. Pl.'s Resp. 20 n.16. Plaintiff a ss e rts that his correspondence with FEMA during this period constitutes a "written claim f o r compensation" sufficient to toll the statute of limitations. Id.; see 14 U.S.C. § 1498(b). In his first letter to FEMA, dated October 17, 2005, Dr. Cohen wrote: "Please le t me know if I have to sue FEMA to get a response." Def.'s App. A2 (Oct. 17 FEMA L etter). Mr. Fried responded to the letter and referred the matter to Mr. Broyles. Def.'s A p p . A3 (Oct. 25 FEMA Letter). Dr. Cohen responded to FEMA on November 1, 2005, re ite ra tin g his intention to sue FEMA for copyright infringement if the matter could not b e settled amicably. Def.'s App. A4 (Nov. 1 FEMA Letter). Mr. Broyles responded on J a n u a r y 26, 2006 that he believed that FEMA's use of the works fell within the Fair Use D o c trin e , and that, in any event, all materials had been removed. Def.'s App. A5-A6 (Jan . 26 FEMA Letter). T h e government notes that, although plaintiff's letters reference the alleged c o p yrig h t infringement, the letters "fail[] to present any underlying facts and fail[] to p re se n t a claim for damages." Def.'s Mot. 13; see Custer, 622 F.2d at 558 (requiring that th e notice of infringement claim be "sufficiently detailed to afford the Government a re a lis tic opportunity to consider and settle the claim"). However, the letters appear to be p a rt of a series of communications between FEMA and plaintiff in the context of which th e letters could be understood as a "written claim for compensation." See Def.'s App. A 2 (Oct. 17 FEMA Letter) (referencing earlier communications between plaintiff and F E M A employees). Viewing the letters in the light most favorable to plaintiff, the court f in d s that plaintiff has raised a genuine issue of material fact regarding the availability of th e tolling provision of 28 U.S.C. § 1498(b). Because plaintiff has raised a genuine issue o f material fact, the United States is not entitled to summary judgment regarding the to llin g provision of 28 U.S.C. § 1498(b) as it may apply to plaintiff's claim. Accordingly, p lain tiff 's recovery is limited only to those damages that occurred within the three years 13

p rio r to filing suit, as that calculation may be affected, however, by a trial decision re g a rd in g availability to plaintiff of the tolling provision of § 1498(b). With respect to defendant's contention that it is not liable for damages for in f rin g e m e n t after March 15, 2007, plaintiff asserts that, although the government took d o w n the infringing materials from its website on March 15, 2004, this act was in s u f f ic ie n t to remove the infringing materials from the internet. Pl.'s Resp. 17-18. Plaintiff asserts that search engines, such as Google, store cached versions of websites a n d that the infringing works continued to be displayed on the cached websites--in v io la tio n of copyright--after March 15, 2004. Id. Plaintiff asserts that his works could be d o w n lo a d e d from the internet, saved on hard drives, and disseminated throughout the in te rn e t even after the government removed the infringing works from its website. Id. at 1 8 -2 0 . In support of his argument that his works were available on the internet after the g o v e rn m e n t "took down" the works, id. at 17-18, plaintiff submitted email c o rre sp o n d e n c e between two FEMA employees dated March 15, 2004, discussing the in f rin g in g materials, Pl.'s App. A602-05 (FEMA Emails). The FEMA Emails state that, a lth o u g h the infringing materials have been taken down from FEMA's website, the in f rin g in g materials "will continue to be seen by people conducting a Google search." Pl.'s App. A603 (FEMA Emails). The emails further state that "even though [the in f rin g in g work] no longer exist[s] on [FEMA's] server," the work will continue to ap p ea r in search results until "Google search engine[s] update[] their database." Id. Mr. C ark h u ff , the representative of HRD Press, Pl.'s App. A121, A126 (Deposition of Mr. C a rk h u f f ), explained in his deposition that "the problem is Google caches everything, and it was hard to get that stuff off Google at that point because it is all cached." Pl.'s App. A 2 2 1 (Deposition of Mr. Carkhuff). Based on correspondence between FEMA employees and statements by a rep rese n tativ e of HRD Press acknowledging that the cached versions of websites were a v a ilab le to the public after the government took down the infringing materials from its w e b site , see Pl.'s App. A121, A126, A221 (Deposition of Mr. Carkhuff), A602-A605 (F E M A Emails), the court finds that plaintiff has raised a genuine issue of material fact, s e e Pl.'s Resp. 17-20, sufficient to defeat defendant's contention that recovery is limited to the period ending on March 15, 2005, see Def.'s Mot. 11-12. IV. C o n c lu s io n

F o r the foregoing reasons, defendant's Motion is GRANTED-IN-PART (as to the inap p lica b ility of the continuing wrong doctrine) and otherwise DENIED. The parties are 14

d i re c te d to file a Joint Status Report or, if the parties cannot agree, separate status reports, o n or before Friday, August 20, 2010, to propose a schedule for further proceedings in the c a se . IT IS SO ORDERED.

s/ Emily C. Hewitt EMILY C. HEWITT C h ie f Judge

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