COHEN v. USA
Filing
84
ORDER granting in part and denying in part 61 Motion for Reconsideration - Rule 59(a). Signed by Chief Judge Emily C. Hewitt. (ce) Copy to parties.
In the United States Court of Federal Claims
No. 07-154 C
(E-Filed: April 14, 2011)
)
)
)
)
)
)
)
)
)
)
)
NORMAN H. COHEN, Ed.D.,
Plaintiff,
v.
THE UNITED STATES,
Defendant.
Motion for Reconsideration;
Standing to Sue the United
States for Copyright
Infringement Under 28 U.S.C. §
1498(b); United States Is Not
Liable for Copyright
Infringement by Third Parties
Not Acting with the
Government’s Authorization or
Consent; United States Cannot
Be Held Liable for Secondary
Copyright Infringement
Jonathan 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
Division, United States Department of Justice, Washington, DC, for defendant. David M.
Ruddy, United States Department of Justice, Washington, DC, of counsel.
OPINION AND ORDER
HEWITT, Chief Judge
Before the court are the United States’ Motion for Reconsideration (defendant’s
Motion or Def.’s Mot.), filed November 19, 2010, Docket Number (Dkt. No.) 61;
Plaintiff’s Response to Defendant’s Motion for Reconsideration of the August 9, 2010
Opinion and Order (plaintiff’s Response or Pl.’s Resp.), filed December 15, 2010, Dkt.
No. 66; Defendant United States’ Reply in Support of its Motion for Reconsideration
(defendant’s Reply or Def.’s Reply), filed December 22, 2010, Dkt. No. 67; Plaintiff’s
Sur Reply to Defendant’s Motion for Reconsideration of the August 9, 2010 Opinion and
Order (plaintiff’s Sur-Reply or Pl.’s Sur-Reply), filed December 30, 2010, Dkt. No. 68-1;
and United States’ Sur-Sur-Reply Addressing Newly Raised Issues in Plaintiff’s SurReply of December 30, 20010 [sic] (defendant’s Sur-Sur-Reply or Def.’s Sur-Sur-Reply),
filed January 11, 2011, Dkt. No. 70-1.
I.
Background
Dr. Norman H. Cohen (Dr. Cohen or plaintiff) brought an action for copyright
infringement against the United States government, acting through the Federal
Emergency Management Agency (United States, FEMA, government or defendant).
Civil Action Complaint (Complaint or Compl.), Dkt. No. 1, at ¶¶ 5, 10. Plaintiff contends
that the United States infringed his copyrights in at least six1 of his works when it
displayed the works on FEMA’s website, thereby making the works available to the
public. Id. ¶¶ 5, 10-12. The government moved for partial summary judgment,
contending, among other things, that plaintiff lacked standing to bring suit under 28
U.S.C. § 1498(b) (2006) for four works published by Human Resource Development
Press, Inc. (HRD Press) and that plaintiff’s period of recovery was limited to the sevenday period of time that FEMA had plaintiff’s works on its website during the three-year
statute of limitations period under 28 U.S.C. § 1498. United States’ Mot. for Partial
Summ. J., Dkt. No. 37, at 1.
In granting-in-part and otherwise denying defendant’s motion, the court made two
findings relevant to this dispute: (1) because the government did not put forward any
evidence to dispute that Dr. Cohen is a beneficial owner of the four works published by
1
Dr. Cohen never clearly states the number of his works which the government allegedly
copied nor the number of infringements of his copyrights the government allegedly committed.
In one paragraph of his Civil Action Complaint (Complaint or Compl.), plaintiff asserted that Dr.
Cohen had authored and “was the copyrighted holder and/or assignee and/or transferee of the
copyrights” of at least twelve works. Compl., Docket Number (Dkt. No. 1), ¶ 5 (“Dr. Cohen was
the author of . . . many intellectual published written and/or recorded works . . . including, but not
limited to, the following [twelve works].”). However, in another paragraph of his Complaint,
plaintiff stated that “[a] key to the works that were unlawfully published is contained in Exhibit
‘A,’” Compl. ¶ 10, and Exhibit A to plaintiff’s Complaint, entitled “FEMA Documents with
Coorelations [sic] to Copyright Infringements In Six Separate Books,” appears to list a total of
only six works, see Compl. Ex. A passim. Adding to the confusion, in Plaintiff’s Response [in]
Opposition to United States’ Motion for Partial Summary Judgment, plaintiff states that the
government committed “multiple infringements” and claims that the government “copied
significant portions of seven of Plaintiff’s related works ‘word-for-word.’” Pl.’s Resp. Opp’n to
United States’ Mot. for Partial Summ. J., Dkt. No. 42, at 2; see id. at 2 n.3 (claiming that the
government infringed the copyrights of “seven works” but listing only six works). Furthermore,
in Plaintiff’s Response to the United States’ Proposed Findings of Uncontroverted Facts in
Support of its Motion for Partial Summary Judgment (Pl.’s Resp. to DFUF), plaintiff
“disagree[d] with and object[ed] to” defendant’s proposed finding that “Dr. Cohen alleges in his
complaint that the government infringes the copyright [of] . . . six works” because “the list of
infringed works is not all-inclusive.” Pl.’s Resp. to DFUF, Dkt. No. 41, ¶ 2.
2
HRD Press, the government failed to show that Dr. Cohen lacked standing to sue for
infringement of the copyrights of those works, Cohen v. United States (Cohen or
Opinion), 94 Fed. Cl. 165, 173-74 (2010), Dkt. No. 50; and (2) because plaintiff put
forward evidence showing that “the cached versions of websites were available to the
public after the government took down the infringing materials from its website,” plaintiff
“raised a genuine issue of material fact sufficient to defeat defendant’s contention that
recovery is limited to the period ending on March 15, 200[4],” id. at 175.
Defendant now moves the court to “reconsider Parts III-B and III-C of its August
9, 2010 [O]pinion that denied the government’s motion for partial summary judgment as
to the issues of ownership and the period of recovery” pursuant to Rules 54(b) and 59(a)
of the Rules of the United States Court of Federal Claims (RCFC). Def.’s Mot. 1. For
the following reasons, defendant’s Motion is GRANTED-IN-PART and DENIED-INPART.
II.
Legal Standards
A.
Motion for Reconsideration
“The standards applicable to reconsideration of non-final decisions are set forth in
Rules 54(b) and 59(a) of the [RCFC].” Alpha I, L.P. ex rel. Sands v. United States, 86
Fed. Cl. 568, 571 (2009). Rule 54(b) provides, in relevant part, that “any order or other
decision, however designated, that adjudicates fewer than all the claims or the rights and
liabilities of fewer than all the parties does not end the action as to any of the claims or
parties and may be revised at any time before the entry of a judgment adjudicating all the
claims and all the parties’ rights and liabilities.” RCFC 54(b). Rule 59(a) provides that
rehearing or reconsideration may be granted as follows: “(A) for any reason for which a
new trial has heretofore been granted in an action at law in federal court; (B) for any
reason for which a rehearing has heretofore been granted in a suit in equity in federal
court; or (C) upon the showing of satisfactory evidence, cumulative or otherwise, that any
fraud, wrong, or injustice has been done to the United States.” RCFC 59(a)(1).
“The decision whether to grant reconsideration lies largely within the discretion of
the [trial] court.” Yuba Natural Res., Inc. v. United States, 904 F.2d 1577, 1583 (Fed.
Cir. 1990). “The court must consider such motion with ‘exceptional care.’” Henderson
Cnty. Drainage Dist. No. 3 v. United States (Henderson), 55 Fed. Cl. 334, 337 (2003)
(quoting Fru-Con Constr. Corp. v. United States (Fru-Con), 44 Fed. Cl. 298, 300 (1999)).
“A motion for reconsideration is not intended . . . to give an ‘unhappy litigant an
additional chance to sway’ the court.” Matthews v. United States, 73 Fed. Cl. 524, 525
(2006) (quoting Froudi v. United States, 22 Cl. Ct. 290, 300 (1991)). “Motions for
3
reconsideration should not be entertained upon ‘the sole ground that one side or the other
is dissatisfied with the conclusions reached by the court, otherwise the losing party would
generally, if not always, try his case a second time, and litigation would be unnecessarily
prolonged.’” Fru-Con, 44 Fed. Cl. at 300 (quoting Seldovia Native Ass’n, Inc. v. United
States, 36 Fed. Cl. 593, 594 (1996)), aff’d, 144 F.3d 769 (Fed. Cir. 1998).
The moving party must support its motion for reconsideration by a showing of
exceptional circumstances justifying relief, based on a manifest error of law or mistake of
fact. Henderson, 55 Fed. Cl. at 337 (citing Franconia Assocs. v. United States, 44 Fed.
Cl. 315, 316 (1999)); Principal Mut. Life Ins. Co. v. United States (Principal), 29 Fed. Cl.
157, 164 (1993) (quoting Weaver-Bailey Contractors, Inc. v. United States, 20 Cl. Ct.
158, 158 (1990)), aff’d, 50 F.3d 1021 (Fed. Cir. 1995)). “Specifically, the moving party
must show: (1) the occurrence of an intervening change in the controlling law; (2) the
availability of previously unavailable evidence; or (3) the necessity of allowing the
motion to prevent manifest injustice.” Matthews, 73 Fed. Cl. at 526 (citing Griswold v.
United States, 61 Fed. Cl. 458, 460-61 (2004)). Where a party seeks reconsideration on
the ground of manifest injustice, it cannot prevail unless it demonstrates that any injustice
is “apparent to the point of being almost indisputable.” Pac. Gas & Elec. Co. v. United
States, 74 Fed. Cl. 779, 785 (2006), aff’d in part and rev’d in part, 536 F.3d 1282 (Fed.
Cir. 2008). In other words, “manifest” is understood as “clearly apparent or obvious.”
Ammex, Inc. v. United States, 52 Fed. Cl. 555, 557 (2002) (citing Principal, 29 Fed. Cl. at
164), aff’d, 384 F.3d 1368 (Fed. Cir. 2004).
B.
Motion for Summary Judgment
A motion for summary judgment may be granted only when “there is no genuine
issue as to any material fact and . . . the movant is entitled to judgment as a matter of
law.” RCFC 56(c)(1). A fact is material if it might affect the outcome of the suit.
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). Where the moving party has
not disputed any facts contained in the non-movant’s pleadings, the court assumes all
well-pleaded facts to be true and draws all applicable presumptions and inferences from
such facts in favor of the non-moving party. See Univ. of W. Va. Bd. of Trs. v.
VanVoorhies, 278 F.3d 1288, 1295 (Fed. Cir. 2002); Banks v. United States, 69 Fed. Cl.
206, 209 (2006).
Failure by a non-moving party to raise a genuine issue of material fact results in
the court’s granting summary judgment in favor of the moving party. See RCFC 56(c)(1).
“The party opposing the motion must point to an evidentiary conflict created on
the record; mere denials or conclusory statements are insufficient.” SRI Int’l v.
4
Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1116 (Fed. Cir. 1985) (en banc) (citing
Barmag Barmer Maschinenfabrik AG v. Murata Mach., Ltd., 731 F.2d 831, 836 (Fed. Cir.
1984)). “[T]he mere existence of some alleged factual dispute between the parties will
not defeat an otherwise properly supported motion for summary judgment; the
requirement is that there be no genuine issue of material fact.” Anderson, 477 U.S. at
247-48 (emphasis omitted).
III.
Discussion
Defendant argues that “[a]s to ownership, plaintiff has no cause of action against
the government concerning the [four works published by HRD Press] because, although
qualifying as a ‘beneficial owner’ under 17 U.S.C. § 501(b) [(2006)], he fails to qualify as
a ‘copyright owner’ under 28 U.S.C. § 1498(b).” Def.’s Mot. 1. Defendant further
contends that “as to the period for recovery, because § 1498(b) contains no waiver of
sovereign immunity for the unauthorized and independent actions of third parties, the
government is not liable for any infringement beyond March 15, 2004, when it removed
the allegedly infringing materials from its server.” Def.’s Mot. 1.
A.
Plaintiff Has Standing to Sue the Government for Copyright Infringement
Under 28 U.S.C. § 1498 for the Four Works Published by HRD Press
In Cohen, the court found that “[i]n order to prevail on its motion for summary
judgment[,] the government must demonstrate that plaintiff has no beneficial or legal
interest in the works in question.” 94 Fed. Cl. at 174 (citing 17 U.S.C. § 501(b)).
Because the government failed to put forward evidence to dispute that Cohen is a
beneficial owner of the four works published by HRD Press, the court denied defendant’s
motion regarding plaintiff’s standing to sue the government for copyright infringement
for those works. Id.
Defendant seeks reconsideration of the court’s finding because “the parties’
dispute concerned the legal issue of whether beneficial ownership conferred standing to
sue under 28 U.S.C. § 1498(b), and not the factual issue of whether Dr. Cohen qualified
as a beneficial owner under 17 U.S.C. § 501(b).” Def.’s Mot. 6. Defendant admits that
“Dr. Cohen’s right to receive royalties pursuant to his contracts with HRD Press
establish[es] that he meets the definition of ‘beneficial owner’ in 17 U.S.C. § 501(b).”
Def.’s Mot. 7. However, defendant disputes “whether such beneficial ownership is
sufficient to confer standing pursuant to a proper statutory interpretation of the
government’s limited waiver of sovereign immunity prescribed by 28 U.S.C. § 1498(b).”
Def.’s Mot. 7; see United States’ Mot. for Partial Summ. J. 6 n.2 (“This waiver of
sovereign immunity by the government for copyright infringement is more narrow than a
5
cause of action that may be brought under the Copyright Act against a private party.”).
Defendant argues that because “‘Dr. Cohen assigned his rights under the Copyright Act in
the four asserted works to HRD Press[,] [a]t the time of the alleged infringement, Dr.
Cohen was no longer the ‘copyright owner’ and therefore has no cause of action against
the government under 28 U.S.C. § 1498.’” Def.’s Mot. 8 (quoting United States’ Mot. for
Partial Summ. J. 8); see United States’ Mot. for Partial Summ. J. 1 (“Dr. Cohen lacks
standing to assert a copyright infringement claim against the United States (government)
under 28 U.S.C. § 1498(b) for the four works published by HRD Press because he was
not the copyright owner at the time of the alleged infringement.”). Because the court did
not address the foregoing legal arguments in Cohen, the court addresses them now. See
RCFC 54(b).
Copyright infringement suits against the United States are governed by 28 U.S.C. §
1498(b). See, e.g., Blueport Co. v. United States, 533 F.3d 1374, 1378-79 (Fed. Cir.
2008); Boyle v. United States, 200 F.3d 1369, 1372-73 (Fed. Cir. 2000). “Section
1498(b) is a detailed, carefully crafted, complex provision in which Congress carefully
and explicitly set forth the precise standards governing private suits against the United
States for copyright infringement.” Walton v. United States, 551 F.3d 1367, 1370 (Fed.
Cir. 2009). Section 1498(b) provides in relevant part as follows:
[W]henever the copyright in any work protected under the copyright laws of
the United States shall be infringed by the United States . . . the exclusive
action which may be brought for such infringement shall be an action by the
copyright owner against the United States in the Court of Federal Claims
for the recovery of his reasonable and entire compensation as damages for
such infringement . . . .
28 U.S.C. § 1498(b).
“Copyright owner” is not defined in 28 U.S.C. § 1498. Furthermore, as far as the
court can discern, the definition of “copyright owner” under 28 U.S.C. § 1498(b) has not
been the subject of a dispositive analysis by the United States Court of Appeals for the
Federal Circuit. Although defendant argues that a beneficial owner is not a “copyright
owner” under 28 U.S.C. § 1498(b) and therefore does not have standing to sue the United
States for copyright infringement, see Def.’s Mot. 7; United States’ Mot. for Partial
Summ. J. 6 n.2, the court need not decide the issue because Dr. Cohen is both the
beneficial and legal owner of the exclusive rights allegedly infringed upon by the
government.
6
“The [United States] Court of Federal Claims applies the substantive law of Title
17 of the United States Code when evaluating copyright infringement claims against the
United States.” RT Computer Graphics, Inc. v. United States, 44 Fed. Cl. 747, 754
(1999) (citing Steve Altman Photography v. United States, 18 Cl. Ct. 267, 279 (1989)).
A copyright is treated “as a bundle of discrete ‘exclusive rights,’ each of which ‘may be
transferred . . . and owned separately” by the legal owner of those rights. N.Y. Times Co.
v. Tasini, 533 U.S. 483, 495-96 (2001) (quoting 17 U.S.C. §§ 106, 201(d)(2)); 17 U.S.C.
§ 201(d)(1) (“The ownership of a copyright may be transferred in whole or in part . . . .”).
The bundle of “exclusive rights” includes the rights of reproduction, preparation of
derivative works, distribution, public performance and public display. 17 U.S.C. § 106.
The legal owner of these exclusive rights may transfer ownership of any one or more of
the rights through the use of an exclusive license. 17 U.S.C. § 101 (“A ‘transfer of
copyright ownership’ is an assignment, mortgage, exclusive license, or any other
conveyance . . . of a copyright or of any of the exclusive rights comprised [sic] in a
copyright . . . .”); see Davis v. Blige, 505 F.3d 90, 100 n.10 (2d Cir. 2007) (“The
differences between an ‘exclusive’ license and an assignment or transfer of copyright
ownership interest have diminished to the point that the terms are nearly synonymous.”).
Once the legal owner grants an exclusive license to one of the exclusive rights, the
“exclusive licensee of an interest is the only one who may exercise that right.” Davis, 505
F.3d at 100 n.10. Therefore, “only the exclusive licensee and not his grantor may sue for
later occurring infringements of such rights.” Essex Music, Inc. v. ABKCO Music &
Records, Inc., 743 F. Supp. 237, 242 (S.D.N.Y. 1990) (emphasis omitted) (citation
omitted); Althin CD Med., Inc. v. W. Suburban Kidney Ctr., 874 F. Supp. 837, 842 (N.D.
Ill. 1994) (citing Essex Music, 743 F. Supp. at 242). Because legal ownership of a
copyright in a work initially vests in the author of the work, the author retains any of the
exclusive rights that the author does not transfer, as well as the right to sue for
infringements of such rights.2 See 17 U.S.C. § 201(a); see also Campbell v. Bd. of Trs. of
2
Under the Copyright Act of 1976 (Copyright Act), which governs copyright suits
between private parties, both the beneficial owner and the legal owner of the copyright
independently have standing to sue for infringement. 17 U.S.C. § 501(b) (2006); see Campbell
v. Bd. of Trs. of Leland Stanford Junior Univ., 817 F.2d 499, 504 (9th Cir. 1987); 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 who may bring an infringement action to
protect this economic interest. See, e.g., Cortner v. Israel, 732 F.2d 267, 270-71 (2d Cir. 1984).
For example, an author who has conveyed exclusive rights in a work in exchange for royalty
payments is the beneficial owner of the work. See, e.g., id.; Moran v. London Records, Ltd., 827
F.2d 180, 183 (7th Cir. 1987) (discussing the legislative history of 17 U.S.C. § 501(b)).
Therefore, under the Copyright Act, an author who receives royalty payments for the work has
continue...
7
Leland Stanford Junior Univ., 817 F.2d 499, 504 (9th Cir. 1987) (“The ability to resort to
the courts to enforce exclusive rights is the cornerstone of the copyright property
interest.”); Essex Music, 743 F. Supp. at 242.
The government contends that Dr. Cohen does not have standing to sue for
copyright infringement because he assigned exclusive rights to HRD Press and was
therefore no longer the legal owner of the copyrights in the following four works: The
Principles of Adult Mentoring Scale (The Principles Article);3 The Principles Article,
Leader’s Guide; The Manager’s Pocket Guide to Effective Mentoring;4 and The Mentee’s
Guide to Mentoring (collectively, the HRD Press works).5 See United States’ Mot. for
Partial Summ. J. 1, 5-6, 8; see also Def.’s Mot. 3-4 (citing Pl.’s Resp. to the United
States’ Proposed Findings of Uncontroverted Facts in Supp. of its Mot. for Partial Summ.
J., Dkt. No. 41, ¶ 5); cf. Pl.’s Resp. Opp’n to United States’ Mot. for Partial Summ. J.,
Dkt. No. 42, at 6 n.5 (agreeing that the four listed “HRD Press [works] are the subject of
2
...continue
standing as a beneficial owner to bring an infringement suit against a private party. See 17
U.S.C. § 501(b); Cortner, 732 F.2d 270-71. The parties agree that Dr. Cohen is a beneficial
owner of the HRD Press works at issue. See United States’ Mot. for Recons. (Def.’s Mot.), Dkt.
No. 61, at 7; Pl.’s Resp. to Def.’s Mot. for Recons. of the Aug. 9, 2010 Op. and Order (Pl.’s
Resp.), Dkt. No. 66, at 6.
3
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.” Pl.’s Resp. Opp’n to United States’ Mot. for Partial Summ. J.,
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 11, with
United States’ Mot. for Partial Summ. J., Dkt. No. 37, at 3-5. The court refers to the work as The
Principles Article throughout its Opinion and Order.
4
The Manager’s Pocket Guide to Effective Mentoring is also referred to as The Manager’s
Pocket Guide to Mentoring. See Pl.’s App. to Pl.’s Resp. Opp’n to United States’ Mot. for
Partial Summ. J. (Pl.’s App.) A105 (HRD Press contract).
5
In his Appendix, Plaintiff included a publishing contract between Dr. Cohen and HRD
Press for a work entitled The Mentee’s Readiness Assessment. See Pl.’s App. A111-A113.
Although both parties cite to the contract in their briefs, see Pl.’s Resp. 4 (citing to Pl.’s App.
A113); Pl.’s Resp. 12 (citing to an HRD Press contract dated October 10, 2000); Def.’s Mot. 4
(citing to Pl.’s App. A113); United States’ Sur-Sur-Reply Addressing Newly Raised Issues in
Pl.’s Sur-Reply of Dec. 30, 20010 [sic] (Def.’s Sur-Sur-Reply), Dkt. No. 70-1, at 2 (citing to Pl.’s
App. A113), plaintiff did not mention this work in his Complaint, see Compl. passim; see also
Compl. Ex. A. passim.
8
this case”). Plaintiff signed publishing contracts with HRD Press for each of the HRD
Press works.6 Pl.’s App. to Pl.’s Resp. Opp’n to United States’ Mot. for Partial Summ. J.
(Pl.’s App.) A101-A110 (HRD Press contracts); see Def.’s App. to United States’ Mot.
for Partial Summ. J. (Def.’s App.) A13-A18 (HRD Press contracts). Each of Dr. Cohen’s
three publishing contracts covering the four HRD Press works7 contain the following
clause:
1. Grant of Exclusive Rights. Author hereby grants and assigns to
Publisher the exclusive right to publish and market the Work in paper,
diskette, and CD-ROM in the United States and in such foreign countries as
the Publisher at its sole discretion may elect.
Pl.’s App. A101, A105, A108 (HRD Press contracts); Def.’s App. A13, A15, A17 (HRD
Press contracts). Two of the three contracts with HRD Press for the HRD Press works
contain the following additional clause:
10. Competitive Material. The Author shall not during time of this
agreement, without the Publisher’s written consent, publish or permit to be
published any material based on work on the same subject written or edited
by the Author, that is likely to compete with or injure the sale of the Work
in the public marketplace. Author reserves the right to use and publish
material based on the Work in scholarly books and journals. Author also
reserves the right to grant scholars and students the same permission for the
purpose of scholarly research.
Pl.’s App. A107, A110 (HRD Press contracts); Def.’s App. A16, A18 (HRD Press
contracts). The third contract with HRD Press, which covers both The Principles Article
and The Principle’s Article, Leader’s Guide, includes a similar clause 10, but also
6
Dr. Cohen’s publishing contract with HRD Press for The Principles Article titled the
work as Principles of Adult Mentoring Assessment. See Pl.’s App. A101 (HRD Press contract);
Def.’s App. to United States’ Mot. for Partial Summ. J. (Def.’s App.) A13 (HRD Press contract).
The contract for this work included components of the work, including the Leader’s Guide, Pl.’s
App. A101 (HRD Press contract); Def.’s App. A13 (HRD Press contract), which both parties
have treated as a separate work infringed upon by the government, see Compl. Ex. A; United
States’ Mot. for Partial Summ. J. 6. Therefore, there are a total of three contracts for the four
HRD Press works at issue.
7
See supra note 6.
9
reserves to Dr. Cohen the “right to use and copy the B&G Scale8 and to publish material
based on research in scholarly books and journals.” Pl.’s App. A103 (HRD Press
contract); Def.’s App. A14 (HRD Press contract). The government asserts that, because
Dr. Cohen conveyed his exclusive rights to reproduce, distribute copies, display the works
and prepare derivative works to HRD Press, only HRD Press has standing to sue for
infringement of these rights. United States’ Mot. for Partial Summ. J. 9-10.
“[P]rinciples of contract law generally apply to construction of copyright
assignments, licenses, and other transfers of rights.” 3 Melville B. Nimmer & David
Nimmer, Nimmer on Copyright (Nimmer) § 10.08[A] (2010); Kennedy v. Nat’l Juvenile
Det. Ass’n, 187 F.3d 690, 694 (7th Cir. 1999) (citing the same section in an earlier edition
of Nimmer). “Contract interpretation requires this court to ascertain what the parties
intended by their writing,” and “the court must determine whether the objective contract
language is ambiguous in light of unanticipated circumstances.” Steve Altman
Photography, 18 Cl. Ct. at 275 (citations omitted). Courts have “held that a license of
rights in a given medium . . . includes only such uses as fall within the unambiguous core
meaning of the term . . . and exclude[s] any uses that lie within the ambiguous
penumbra . . . . Thus, any rights not expressly (in this case meaning unambiguously)
granted are reserved.” Nimmer § 10.10[B] (citations omitted); Rey v. Lafferty, 990 F.2d
1379, 1388 (1st Cir. 1993) (quoting similar language in an earlier edition of Nimmer); see
1 William F. Patry, Copyright Law and Practice 392 (1994) (stating that “agreements
should, wherever possible, be construed in favor of the copyright transferor, on the
ground that the principle embodied in [17 U.S.C. § 204(a)]–a transfer of rights is valid if
it is in writing and signed by the owner of the rights conveyed–reflects a policy judgment
that copyright owners should retain all rights unless specifically transferred”).
The relevant terms of the contract for each of the four HRD Press works are
identical and unambiguous: plaintiff assigned “the exclusive right to publish and market
the Work in paper, diskette, and CD-ROM” to HRD Press. Pl.’s App. A101, A105, A108
(HRD Press contracts). Plaintiff did not assign his rights to reproduce, display and
distribute9 his works on the Internet to HRD Press. See Pl.’s App. A101, A105, A108
8
The B&G Scale is a component of The Principles Article. See Pl.’s App. A101 (HRD
Press contract); Def.’s App. A13 (HRD Press contract).
9
The parties briefly dispute whether placing copyrighted materials on the Internet
constitutes direct infringement of the copyright owner’s distribution right under 17 U.S.C. §
106(3). Def.’s Mot. 13 n.3; Pl.’s Resp. 14 n.8; Def. United States’ Reply in Supp. of its Mot. for
Recons. (Def.’s Reply), Dkt. No. 67, at 10 n.4; Pl.’s Sur Reply to Def.’s Mot. for Recons. of the
continue...
10
(HRD Press contracts). Because plaintiff did not explicitly assign his rights to reproduce,
display and distribute his works on the Internet, but rather assigned to HRD Press only
“the exclusive right to publish and market the Work in paper, diskette, and CD-ROM,”
Dr. Cohen retained the rights to reproduce, display and distribute his works on the
Internet. See Pl.’s App. A101, A105, A108 (HRD Press contracts); see also 17 U.S.C. §
201(a), (d) (retaining to the author of the work any of the exclusive rights that the author
does not transfer).
“In construing the terms of the license, this court must give precedence to narrow,
specific language over broad, general language.” Steve Altman Photography, 18 Cl. Ct.
at 281. In Steve Altman Photography, 18 Cl. Ct. at 281, the defendant contended that the
license’s broad language regarding “public relations” authorized publication of portraits
in an annual report. The court found that the defendant had “overlook[ed] that the
authorization itself discusses specifically annual report usage” and found that because the
“license limit[ed] annual report usage to the 1982 annual report,” the “license [did] not
authorize publication of the seven copyrighted portraits in [the] 1983 annual report.” Id.;
cf. Rey, 990 F.2d at 1390 (finding that because the license “contemplate[d] a
comparatively limited and particular grant of rights,” the right to distribute the films “‘for
television viewing’” did not “encompass the right to distribute the . . . films in
videocassette form” (emphasis omitted)). Similarly, clause 10 of the contracts contains
broad language whereby Dr. Cohen agreed not to “publish or permit to be published any
material based on work on the same subject written or edited by [him], that is likely to
compete with or injure the sale of the Work[s] in the public marketplace.” Pl.’s App.
A103, A107, A110 (HRD Press contracts). While contending that the broad language in
clause 10 means that Dr. Cohen transferred his rights to reproduce, display and distribute
his works on the Internet to HRD Press, see Def.’s Sur-Sur-Reply 3, defendant overlooks
that the contract specifically limits the format in which HRD Press may publish and
market10 the works to “paper, diskette, and CD-ROM,” Pl.’s App. A101, A105, A108
9
...continue
Aug. 9, 2010 Op. and Order (Pl.’s Sur-Reply), Dkt. No. 68-1, at 4. The court does not need to
decide this issue at this time, and instead only finds that if placing copyrighted materials on the
Internet constitutes infringement of the owner’s distribution right, plaintiff has standing to sue
the government for the infringement of such right because under his contracts with HRD Press
for the HRD Press works at issue, Dr. Cohen did not transfer this right to HRD Press. See Pl.’s
App. A101, A105, A108 (HRD Press contracts); see also 17 U.S.C. § 201(a), (d) (retaining to the
author of the work any of the exclusive rights that the author does not transfer).
10
Defendant also argues that “the term ‘publish and market’ encompasses the right to
reproduce, distribute copies, and display the works.” Def.’s Sur-Sur-Reply 3; United States’
continue...
11
(HRD Press contracts). Clause 10 of the license also reserves to Dr. Cohen the right to
prepare and publish derivative works “in scholarly books and journals” and anywhere that
is not “likely to compete with or injure the sale of the Work in the public marketplace.”
See Pl.’s App. A103, A107, A110 (HRD Press contracts).
This case is also similar to Cohen v. Paramount Pictures Corp. (Paramount), 845
F.2d 851, 852 (9th Cir. 1988), in which the copyright owner of a musical composition
licensed to H & J Pictures, Inc. (H & J Pictures) the right to use the composition in a film
and to exhibit the film in theatres and on television. The license began by granting the
licensee the broad “authority . . . to record, in any manner, medium, form or language, the
words and music of the musical composition” and “to make copies of such recordings and
to perform said musical composition everywhere, all in accordance with the terms,
conditions, and limitations hereinafter set forth . . . .” Id. at 853 (omitted material in
original) (emphasis omitted). The license then specifically limited H & J Pictures’ rights
to the composition by stating the following:
The . . . license herein granted to perform . . . said musical composition is
granted for: (a) The exhibition of said motion picture . . . to audiences in
motion picture theatres and other places of public entertainment where
motion pictures are customarily exhibited . . . (b) The exhibition of said
motion picture . . . by means of television . . . , including “pay television”,
“subscription television” and “closed circuit into homes” television . . . .
Id. (omitted material in original) (emphasis omitted). H & J Pictures subsequently
assigned to Paramount Pictures (Paramount) all of its rights, title and interest in the
motion picture. Id. at 852. Paramount then had a videocassette manufacturer make
copies of the film on videocassette, which Paramount sold to the public. Id. The plaintiff
sued Paramount for copyright infringement, claiming that the license “did not confer the
right to use the composition in a reproduction of the film in videocassettes distributed for
home display.” Id. Reading the license narrowly, the court found that “[a]lthough the
language of the license permits the recording and copying of the movie with the musical
composition in it, in any manner, medium, or form, nothing in the express language of the
license authorizes distribution of the copies to the public by sale or rental.” Id. at 853
(emphasis omitted). Similarly, while Dr. Cohen’s contracts with HRD Press permit HRD
10
...continue
Mot. for Partial Summ. J. 9-10 (citing Campbell, 817 F.2d at 504). However, the limiting
language following the phrase makes it clear that even if “publish and market” does encompass
the right to reproduce, distribute copies and display the works, HRD Press has the right to do so
only on “paper, diskette, and CD-ROM.” Pl.’s App. A101, A105, A108 (HRD Press contracts).
12
Press “to publish and market the Work in paper, diskette, and CD-ROM,” Pl.’s App.
A101, A105, A108 (HRD Press contracts), nothing in the express language of the licenses
authorizes HRD Press to reproduce, distribute or display the works on the Internet.
Furthermore, “this court must construe any ambiguity in the authorization against
the drafter.” Steve Altman Photography, 18 Cl. Ct. at 280 (citing Thanet Corp. v. United
States, 219 Ct. Cl. 75, 591 F.2d 630, 633 (1979)); see Rey, 990 F.2d at 1391. HRD Press
drafted the contracts for the HRD Press works. See Pl.’s App. A166-A167 (Dep. of
Robert W. Carkhuff) (agreeing that for the HRD Press works at issue, HRD Press used a
“form contract”); Pl.’s App. A169 (Dep. of Robert W. Carkhuff) (stating that the contract
is “our standard contract or it was at the time”). Therefore, if HRD Press desired the
rights to reproduce, distribute or display Dr. Cohen’s works on the Internet, HRD Press
should have drafted the contract to include a transfer of such rights.
The court recognizes that some courts read licenses broadly, so that “the licensee
may properly pursue any uses that may reasonably be said to fall within the medium as
described in the license.” Nimmer § 10.10[B]; see Boosey & Hawkes Music Publishers,
Ltd. v. Walt Disney Co., 145 F.3d 481, 486 (2d Cir. 1998) (stating that a license that
“conveys the right to record [the composition] in any manner, medium or form for use in
[a] motion picture” is “broad enough to include distribution of the motion picture in video
format” (bracketed material in original) (internal quotation marks omitted)). However,
even if this court were to take a broader interpretation of the licenses, the result would be
the same. Although defendant argues that the “underlying contracts clearly encompass
electronic formats by virtue of the terms diskette and CD-ROM,” Def.’s Sur-Sur-Reply 4
(internal quotation marks omitted), the display of works on the Internet cannot be said to
reasonably fall within the mediums of “paper, diskette, and CD-ROM,” see Pl.’s App.
A101, A105, A108 (HRD Press contracts).
“This court must interpret the terms [in the license] according to their recognized
meanings.” Steve Altman Photography, 18 Cl. Ct. at 280 (citation omitted). A “diskette,”
which is another word for “floppy disk,” The American Heritage Dictionary of the
English Language 520 (4th ed. 2000), is “[a] flexible plastic disk coated with magnetic
material and covered by a protective jacket, used primarily by computers to store data
magnetically,” id. at 675. A “CD-ROM” is defined as “[a] compact disk that functions as
read-only memory.” Id. at 298. The “Internet” is “[a]n interconnected system of
networks that connects computers around the world via the TCP/IP protocol,” id. at 915,
and a “website” is “[a] set of interconnected webpages, usually including a homepage,
generally located on the same server, and prepared and maintained as a collection of
information by a person, group, or organization,” id. at 1949. Although the use of
diskettes, CD-ROMs and the Internet involves a computer, to view material on diskettes
13
and CD-ROMs does not require the use of a network, whereas to view websites on the
Internet, the computer must be connected to a network. See The American Heritage
Dictionary of the English Language 915, 1949; cf. Paramount, 845 F.2d at 853-54
(explaining that “[e]xhibition of a film on television differs fundamentally from
exhibition by means of a videocassette recorder” because “[t]elevision requires an
intermediary network, station, or cable to send the television signals into consumers’
homes,” whereas videocassettes “eliminate the involvement of an intermediary, such as a
network”). Because diskettes and CD-ROMs are capable of storing information in a
fixed medium, see The American Heritage Dictionary of the English Language 298, 675,
the owner of a diskette or CD-ROM would be able to view the information stored on
those disks for as long as the owner possessed the disks. On the other hand, because
websites are maintained by an intermediary, see The American Heritage Dictionary of the
English Language 1949, the time an individual may access the information on the website
is limited to the time the person, group or organization that maintains the website displays
the material, cf. Paramount, 845 F.2d at 853-54 (distinguishing viewing a film on a
videocassette, where the “entertainment is controlled within the home, at the viewer’s
complete discretion,” and viewing a film on a television channel, which is “controlled
entirely by the intermediary”). Because diskettes and CD-ROMs have little in common
with the Internet besides the fact that an individual would use a computer to view the
information displayed on each source, the Internet cannot “reasonably be said to fall
within the medium as described in the license.” Nimmer § 10.10[B]; cf. Paramount, 845
F.2d at 854 (concluding that “[t]elevision and videocassette display . . . have very little in
common besides the fact that a conventional monitor of a television set may be used both
to receive television signals and to exhibit a videocassette”).
Defendant argues that, despite the limited language in the contract, the conduct of
the parties pursuant to the contract indicates that Dr. Cohen conveyed his exclusive right
to display his works on the Internet to HRD Press. Def.’s Sur-Sur-Reply 4-5. Defendant
claims that Dr. Cohen’s works are displayed on HRD Press’s website, entitled Ultimate
Trainer’s Resource Library, and on a website owned and operated by Amazon.com, Inc.
(Amazon). Def.’s Sur-Sur-Reply 5; see generally Def.’s Sur-Sur-Reply Ex. A A55-A64
(screenshots from the Ultimate Trainer’s Resource Library and Amazon). Defendant
states that because “HRD Press, with the apparent acquiescence of Dr. Cohen, has
displayed his works via the [I]nternet on a website for a fee,” and because “HRD Press
has also allowed Amazon to use its ‘Look Inside’ feature for at least one of the works at
issue, . . . so that a potential buyer may peruse some of the content of the book,” “Dr.
Cohen has retained no exclusive rights to the HRD Press works at issue[,] is not a legal
owner of these copyrights” and therefore does not have standing to sue the government
for copyright infringement of those works. Def.’s Sur-Sur-Reply 5. However, on the
record before the court, there is no evidence that Dr. Cohen assigned to HRD Press the
14
exclusive right to display his works on the Internet. A transfer of ownership of an
exclusive right must be in writing. 17 U.S.C. § 204(a); Davis, 505 F.3d at 100 n.10
(“[E]xclusive license agreements must be in writing.” (citation omitted)); RT Computer
Graphics, 44 Fed. Cl. at 754 (“[A]ny ‘transfer of copyright ownership’ must be in writing
and signed.” (citations omitted)). Through his contracts with HRD Press, Dr. Cohen
conveyed to HRD Press “the exclusive right to publish and market the Work[s] in paper,
diskette, and CD-ROM” only. Pl.’s App. A101, A105, A108 (HRD Press contracts).
Defendant has not cited to or produced a writing between Dr. Cohen and HRD Press in
which Dr. Cohen has conveyed to HRD Press his exclusive right to display his works on
the Internet. See Def.’s Sur-Sur-Reply 4-5. Any oral agreement between Dr. Cohen and
HRD Press or Amazon in which Dr. Cohen allowed either company to display his works
on the Internet is irrelevant because an oral agreement is a non-exclusive license, and a
non-exclusive license does not transfer copyright ownership or the right to sue for
infringements of such rights. 17 U.S.C. § 101; see RT Computer Graphics, 44 Fed. Cl. at
754; see also Essex Music, 743 F. Supp. at 242. Furthermore, any agreement, written or
oral, between HRD Press and Amazon to display Dr. Cohen’s works on Amazon’s
website is also irrelevant because only Dr. Cohen, who is the exclusive owner of the right
to display his works on the Internet, may transfer that right. See 17 U.S.C. § 201(d)(2).
Because plaintiff has standing to sue the government for copyright infringement
under 28 U.S.C. § 1498(b), the United States has not suffered any “manifest injustice”
from the court’s denial of the United States’ Motion for Partial Summary Judgment, see
Matthews, 73 Fed. Cl. at 526 (citation omitted), and defendant’s motion for
reconsideration on this issue is DENIED.
B.
The Government Cannot Be Held Liable for Copyright Infringement After
FEMA Removed Plaintiff’s Works from its Website
In Cohen, the court stated that “the government took down the infringing materials
from its website on March 15, 2004.” 94 Fed. Cl. at 175. However, because plaintiff put
forward evidence that “the cached versions of websites were available to the public after
the government took down the infringing materials from its website,” the court found that
plaintiff “raised a genuine issue of material fact sufficient to defeat defendant’s
contention that recovery is limited to the period ending on March 15, 200[4].” Id.
Defendant seeks reconsideration “because it is unclear whether the Court
overlooked the government’s arguments since the opinion of August 9, 2010, did not
reference the Boyle decision or more generally address any sovereign immunity waiver
for secondary liability.” Def.’s Mot. 15 (citation omitted). Defendant contends that the
government is not directly liable for copyright infringement after FEMA removed the
15
materials from its website because after that date, defendant was no longer infringing on
any of the rights prescribed by 17 U.S.C. § 106. Def.’s Mot. 13-14; see United States’
Mot. for Partial Summ. J. 12 (“To the extent the government’s postings to its servers
constitute copyright infringement, this conduct terminated on March 15, 2004, and there
is no basis to establish copyright infringement beyond that date.” (citation omitted)).
Defendant also argues that because 28 U.S.C. § 1498(b) does not waive sovereign
immunity for the unauthorized and independent actions by third parties, the United States
cannot be held secondarily liable for direct infringement caused by search engines such as
Google, Inc. (Google) or downstream Internet users after FEMA removed the infringing
material from its website. Def.’s Mot. 14-15; see United States’ Mot. for Partial Summ.
J. 12 (“Nor can there be any basis for copyright infringement on a theory of contributory
infringement or inducement.” (citation omitted)). Because the court did not address the
foregoing legal arguments in Cohen, the court addresses them now. See RCFC 54(b).
For copyright infringement suits, “the United States has waived sovereign
immunity in three instances: (1) when the United States itself infringes a copyright, (2)
when a corporation owned or controlled by the United States infringes, and (3) when a
contractor, subcontractor, or any person, firm, or corporation, acting for the Government
and with its authorization or consent, infringes.” Boyle, 200 F.3d at 1373 (citing 28
U.S.C. § 1498(b)). In other words, Congress intended “to waive the government’s
sovereign immunity to suits for copyright infringement only when it infringes a copyright
itself or authorizes or consents to infringement by a third party acting for it.” Id.
Therefore, in order to defeat defendant’s contention that plaintiff’s period of recovery
ended on the date the government removed Dr. Cohen’s works from its website, plaintiff
must show that the government itself continued to infringe Dr. Cohen’s copyright or a
third party acting for the government infringed Dr. Cohen’s copyright with the
government’s authorization or consent.
1.
The United States Is Not Directly Liable for Copyright Infringement After
FEMA Removed Plaintiff’s Works from its Website
Copyright “[i]nfringement requires two elements: ‘(1) ownership of a valid
copyright, and (2) copying of constituent elements of the work that are original.’”
Gaylord v. United States, 595 F.3d 1364, 1372 (Fed. Cir. 2010) (quoting Feist Publ’ns,
Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)). “The word ‘copying’ is
shorthand for the infringing of any of the copyright owner’s five exclusive rights
described in [17 U.S.C.] § 106.” Arista Records LLC v. Doe 3, 604 F.3d 110, 117 (2d
Cir. 2010) (quoting A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1013 (9th Cir.
2001)) (internal quotation marks omitted); see Gamma Audio & Video, Inc. v. Ean-Chea,
11 F.3d 1106, 1115 (1st Cir. 1993) (“Copying is demonstrated when someone who has
16
access to a copyrighted work uses material substantially similar to the copyrighted work
in a manner which interferes with a right protected by 17 U.S.C. § 106.” (quoting Ford
Motor Co. v. Summit Motor Prods., Inc., 930 F.2d 277, 291 (3d Cir. 1991))). Under 17
U.S.C. § 106, the owner of a copyright of a literary work has the following exclusive
rights: (1) “to reproduce the copyrighted work”; (2) “to prepare derivative works based
upon the copyrighted work”; (3) “to distribute copies . . . of the copyrighted work to the
public”; (4) “to perform the copyrighted work publicly”; and (5) “to display the
copyrighted work publicly.” 17 U.S.C. § 106.
The government is not directly liable for copyright infringement after FEMA
removed Dr. Cohen’s works from its website because at that point, neither the
government nor any entity acting for the government and with the government’s
authorization or consent was infringing on one of plaintiff’s exclusive rights under 17
U.S.C. § 106. See 28 U.S.C. § 1498(b); see also Arista Records, 604 F.3d at 117. In
other words, there is no evidence in the record to suggest, and plaintiff does not argue,
that after FEMA removed Dr. Cohen’s materials from its website, the government
reproduced Dr. Cohen’s works, prepared derivative works based on Dr. Cohen’s works,
distributed copies of Dr. Cohen’s works to the public, performed Dr. Cohen’s works
publicly or displayed Dr. Cohen’s works publicly. See 17 U.S.C. § 106.
Defendant admits that “[t]here is testimony in the record that the accused materials
were still available on the Internet from a storage location hosted by [Google] after
FEMA removed the accused materials from its website.” United States’ Mot. for Partial
Summ. J. 11 n.4 (citations omitted). However, in order to hold the government liable for
the display or distribution11 of Dr. Cohen’s materials through the stored version of
FEMA’s website available in Google’s cache, plaintiff must prove that Google was acting
for the government and with its authorization or consent when it displayed or distributed
Dr. Cohen’s works through its cached version of the FEMA website. See 28 U.S.C. §
1498(b); Boyle, 200 F.3d at 1373 (explaining that “[t]he final clause [of 28 U.S.C. §
1498(b)] extends the waiver to third parties acting for the government and with the
government’s authorization or consent” (quoting Auerbach v. Sverdrup Corp., 829 F.2d
175, 179 (D.C. Cir. 1987)) (emphasis in original) (internal quotation marks omitted)).
The “government waiver of immunity by authorization and consent requires explicit acts
11
The parties dispute whether placing copyrighted materials on the Internet constitutes
direct infringement of the copyright owner’s distribution right under 17 U.S.C. § 106(3). Def.’s
Mot. 13 n.3; Pl.’s Resp. 14 n.8; Def.’s Reply 10 n.4; Pl.’s Sur-Reply 4. Because the court is
considering only whether the United States can be held liable for copyright infringement after
FEMA removed Dr. Cohen’s works from its website, the court need not decide this issue at this
time.
17
or extrinsic evidence sufficient to prove the government’s intention to accept liability for
a specific act of infringement.” Auerbach, 829 F.2d at 177; Freiman v. Lazur, 925 F.
Supp. 14, 20 (D.D.C. 1996) (quoting same).
Plaintiff does not argue and has put forth no evidence to suggest that Google was
acting for the government or that the government authorized or consented to Google’s
caching of FEMA’s website. See Pl.’s Resp. Opp’n to United States’ Mot. for Partial
Summ. J. 17-20; Pl.’s Resp. 13-14; Pl.’s Sur-Reply 5-6. Similarly, plaintiff has not
argued or put forth evidence to suggest that any downstream Internet users who accessed
Dr. Cohen’s materials through Google’s cache after FEMA removed the materials from
its website were acting for the government and with its authorization or consent. See
Pl.’s Resp. Opp’n to United States’ Mot. for Partial Summ. J. 17-20; Pl.’s Resp. 13-14;
Pl.’s Sur-Reply 5-6. Instead, plaintiff contends that “the task of fixing such a
hypothetical ‘removal’ date is nearly moot,” Pl.’s Resp. Opp’n to United States’ Mot. for
Partial Summ. J. 20, because “Plaintiff’s damages resulting from the obliteration of the
copyright obviously continued after the offending materials were allegedly removed from
FEMA’s website,” id. at 19. Plaintiff argues that “the government’s act of infringing
Plaintiff’s works forever placed these works in the public domain,” Pl.’s Resp. 13-14,
which “destroyed the copyright for all time, [and] the measure of damages for the taking
is the full and reasonable value of the copyright,”12 Pl.’s Resp. 14; see Pl.’s Sur-Reply 6
12
In Plaintiff’s Response to Defendant’s Motion for Reconsideration of the August 9,
2010 Opinion and Order, plaintiff, for the first time, raised an argument that the government is
liable for copyright infringement under the Takings Clause of the Fifth Amendment. See Pl.’s
Resp. 14 (citing U.S. Const. amend. V, cl. 4). After stating the three circumstances in which the
United States has waived its sovereign immunity for copyright infringement and citing to 28
U.S.C. § 1498(b) (2006), Pl.’s Resp. 13, plaintiff stated the following:
When the public took Plaintiff’s content from the site, the public was not
infringing at all, but merely taking what the government had rendered public by its
own infringement. Since the public could take Plaintiff’s content from the site
without actually infringing itself, the statute above is clearly inapplicable. The
government was the only “infringing” party, and the damages are to be measured
by the total value of Plaintiff’s copyright for all time. The government must prove
just compensation when it “takes” a person’s property by destroying, physically
occupying, or excessively regulating it for a public purpose. See U.S. Const.
Amend. V, cl.4. Publication of Plaintiff’s material on its public site destroyed the
copyright for all time, [and] the measure of damages for the taking is the full and
reasonable value of the copyright.
continue...
18
(“Defendant is liable for the full value of its infringement which in this case is the whole
value of the copyright, which it rendered completely worthless by blatantly infringing on
Dr. Cohen’s copyrights and displaying the copyrighted works to the entire world.”).
Plaintiff’s argument conflates the issue of whether the United States can be held
liable for copyright infringement with the amount of damages to which Dr. Cohen is
entitled as a result of any infringement of his copyrights by the government. Upon a
finding of copyright infringement by the United States or a third party acting for the
government and with its authorization or consent, a plaintiff is entitled to “the recovery of
his reasonable and entire compensation as damages for such infringement, including the
minimum statutory damages as set forth in [17 U.S.C. § 504(c)].” 28 U.S.C. § 1498(b).
However, under its limited waiver of sovereign immunity, the United States may be held
liable only for infringements by the government or by a third party acting for the
government and with its authorization or consent. 28 U.S.C. § 1498(b); see Boyle, 200
F.3d at 1372-73. Because plaintiff has not argued and there is no evidence showing that
Google or any downstream Internet users acted for the government and with its
authorization or consent, the United States cannot be held liable for copyright
infringement after it removed Dr. Cohen’s materials from its website.
2.
The United States Cannot Be Held Secondarily Liable for Copyright
Infringement
It does not appear that plaintiff contends that the government is secondarily liable
for copyright infringement. See Pl.’s Resp. Opp’n to United States’ Mot. for Partial
Summ. J. 20 (“Plaintiff is not . . . complaining of ‘infringements’ per se by third
parties . . . but rather, that the Government’s direct infringement via a non-copyrightable
public domain website destroyed the copyrights . . . .” (emphasis in original)); Pl.’s Resp.
14 (“When the public took Plaintiff’s content from the site, the public was not infringing
12
...continue
Pl.’s Resp. 14. However, it is 28 U.S.C. § 1498(b), not the Fifth Amendment, that provides the
waiver of sovereign immunity that enables a plaintiff to file suit against the government for
copyright infringement in the United States Court of Federal Claims. See 28 U.S.C. § 1498(b).
Because 28 U.S.C. § 1498(b) provides the exclusive remedy for claims of copyright infringement
against the government, plaintiff does not have a cognizable claim under the Fifth Amendment
against the government. 28 U.S.C. § 1498(b); see Zoltek Corp. v. United States, 442 F.3d 1345,
1353 (Fed. Cir. 2006) (per curiam) (finding that 28 U.S.C. § 1498(a), the waiver of sovereign
immunity for patent infringement claims against the government, displaces any Fifth Amendment
taking claim for patent infringement because to hold otherwise “would render superfluous §
1498”).
19
at all, but merely taking what the government had rendered public by its own
infringement.”); Pl.’s Sur-Reply 6 (“[T]he infringement here was directly that of the
Defendant . . . .”). However, because defendant argues that there cannot “be any basis for
copyright infringement on a theory of contributory infringement or inducement,” United
States’ Mot. for Partial Summ. J. 12 (citing Siler v. United States, No. 2009-5130, slip.
op. at 2, 363 F. App’x 750, 750 (Fed. Cir. Feb. 2, 2010) (per curiam) (unpublished));
Def.’s Mot. 12-13, the court briefly addresses the issue.
Secondary liability for copyright infringement is a term that encompasses both
contributory infringement and vicarious infringement. See Metro-Goldwyn-Mayer
Studios, Inc. v. Grokster, Ltd., 545 U.S. 913, 930 (2005). “One infringes contributorily
by intentionally inducing or encouraging direct infringement and infringes vicariously by
profiting from direct infringement while declining to exercise a right to stop or limit it.”
Id. (citations omitted). The government has not waived its sovereign immunity for
secondary liability based on infringement by unauthorized and independent third parties.
See 28 U.S.C. § 1498(b); see also Boyle v. United States, 44 Fed. Cl. 60, 63 (1999)
(stating that “the Government is not liable for its inducing infringement by others [or] for
its conduct contributory to infringement of others” (quoting Decca Ltd. v. United States,
225 Ct. Cl. 326, 335-36 (1980))), aff’d, 200 F.3d 1369 (Fed. Cir. 2000). Therefore, the
court agrees with defendant and finds that the government cannot be held liable as a
contributory or vicarious infringer for the actions taken by search engines such as Google
or downstream private Internet users.
Because the United States cannot be held liable for infringing acts by third parties
that are not acting for the government or with the government’s authorization or consent
under 28 U.S.C. § 1498(b), the United States suffered a “manifest injustice” from the
court’s denial of the United States’ Motion for Partial Summary Judgment, see Matthews,
73 Fed. Cl. at 526 (citation omitted), and defendant’s motion for reconsideration on this
issue is GRANTED.
IV.
Conclusion
For the foregoing reasons, defendant’s Motion is GRANTED-IN-PART and
DENIED-IN-PART. To the extent inconsistent with this Opinion and Order, the court’s
August 9, 2010 Opinion is SUPERSEDED.
20
IT IS SO ORDERED.
s/ Emily C. Hewitt
EMILY C. HEWITT
Chief Judge
21
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?