Cambridge University Press et al v. Patton et al

Filing 273

MOTION in Limine to Overrule Objections to Evidence of Alleged Infringementsby Cambridge University Press, Oxford University Press, Inc., Sage Publications, Inc.. (Attachments: # 1 Exhibit A)(Rains, John)

UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF GEORGIA,
ATLANTA DIVISION

CAMBRIDGE UNIVERSITY PRESS,
OXFORD UNIVERSITY PRESS, INC.,
and SAGE PUBLICATIONS, INC.,

Civil Action No. 1:08-CV-1425-ODE

Plaintiffs,
- vs. –
MARK P. BECKER, in his official
capacity as Georgia State University
President, et. al.
Defendants.

PLAINTIFFS’ MOTION IN LIMINE TO OVERRULE OBJECTIONS
TO EVIDENCE OF ALLEGED INFRINGEMENTS
Plaintiffs Cambridge University Press, Oxford University Press, Inc., and
SAGE Publications, Inc. (collectively, “Plaintiffs”) submit this memorandum in
support of their motion to overrule several legally defective objections Defendants
have interposed to the evidence of alleged infringements on the parties’ March 15,
2011 Joint Filing, Docket No. 266 (the “Joint Filing”). Specifically, Plaintiffs
move to overrule: (1) the objection that an exclusive license to publish a work does
not confer standing to bring a copyright infringement claim; (2) the objection that
874754.1

copyright registration is a prerequisite to a suit for infringement of works first
published outside the United States; and (3) the objection that Plaintiffs should
have produced “deposit copies” of each allegedly infringed work. As explained
below, each of these objections is wrong as a matter of law.
ARGUMENT
I.

AN EXCLUSIVE LICENSEE HAS STANDING TO SUE FOR
INFRINGEMENT
Defendants object to a number of claimed infringements on the Joint Filing

on the ground that the publisher-plaintiff has an exclusive license to publish the
work but is not the owner of the copyright. This objection is wrong as a matter of
law.
Section 501(b) of the Copyright Act provides that the “legal or beneficial
owner of an exclusive right under a copyright is entitled . . . to institute an action
for any infringement of that particular right committed while he or she is the owner
of it.” 17 U.S.C. § 501(b). The owner of a copyright right for purposes of section
501(b) includes an exclusive licensee of the right. See 17 U.S.C. § 101 (defining
“transfer of copyright ownership” as including an “exclusive license”); Saregama
India Ltd. v. Mosley, No. 10-10626, 2011 WL 1103337, at *5 n.22 (11th Cir. Mar.
25, 2011). As one authoritative treatise states, “A copyright owner may transfer
copyright ownership by assignment or exclusive license, the two being
874754.1

2

synonymous. An exclusive license is copyright ownership.” 2 WILLIAM F. PATRY,
PATRY ON COPYRIGHT § 5:101 (2010) (emphasis in original) (cited in Saregama,
2011 WL 1103337, at *5 n.22).
Section 201(d) of the Act provides that the “owner of any particular
exclusive right is entitled, to the extent of that right, to all of the protection and
remedies accorded to the copyright owner.” 17 U.S.C. § 201(d). Therefore, a
party has standing to sue with respect to a particular work if it has been granted an
exclusive license to one or more of the copyright rights in the work that allegedly
were infringed. See, e.g., Saregama, 2011 WL 1103337, at *6 (explaining that the
owner of an exclusive right can bring a copyright infringement claim based on
infringement of that right).
Thus, Defendants’ objection to the standing of an exclusive licensee should
be overruled.
II.

REGISTRATION IS NOT A PREREQUISITE TO SUIT FOR
FOREIGN WORKS
Defendants’ objections to works first published by one of the Plaintiffs in

the United Kingdom on the ground that Plaintiffs failed to produce copyright
registrations for these works have no merit. There is no need to obtain a U.S.
copyright registration for works first published in foreign countries, including in
the United Kingdom, in order to commence an infringement action.
874754.1

3

Federal courts have jurisdiction to hear suits related to foreign works – and
to award relief based on infringement of those works in the United States – even
without registration. Section 104(b)(2) of Title 17 grants “protection under this
title” to works “first published in . . . a foreign nation that, on the date of first
publication, is a treaty party.” 17 U.S.C. § 104(b)(2). The United Kingdom, as a
signatory to the Berne Convention,1 an international agreement concerning
intellectual property, is a “treaty party.” See 17 U.S.C. § 101 (defining treaty party
as “a country . . . other than the United States that is a party to an international
agreement,” including the Berne Convention); United States Copyright Office,
International Copyright Relations of the United States (Circular 38A), at 10 & n.3
(identifying the United Kingdom as signatory to Berne Convention); see also 2
NIMMER ON COPYRIGHT § 7.16[B][1][b][ii] (explaining that “the claimant of a

1

The Berne Convention is “the Convention for the Protection of Literary and
Artistic Works, signed at Berne, Switzerland, on September 9, 1886, and all acts,
protocols, and revisions thereto.” 17 U.S.C. § 101. The United States acceded to
the Berne Convention effective March 1, 1989. See Berne Convention
Implementation Act of 1988 (BCIA), March 1, 1989, Pub. L. 100-568. When the
United States joined the Berne Convention, Title 17 was revised to provide that
works published in countries that do not require formalities such as copyright
registration will not lose copyright protection in the United States for that reason.
See 2 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT
§ 7.16[B][1][b][ii] (2010); 4 NIMMER ON COPYRIGHT at § 17.01[C][2][b].
874754.1

4

copyright in any [non-United States] work may file suit in a United States district
court without first trying to register the work in the Copyright Office”).
Protection of foreign works under U.S. law as described above is, in some
situations, limited by section 411(a) of the Copyright Act, which provides, in
relevant part, that “no civil action for infringement of the copyright in any United
States work shall be instituted until preregistration or registration of the copyright
claim has been made in accordance with this title.” 17 U.S.C. § 411(a) (emphasis
added). A “United States work” is defined in section 101 as a work first published
“in the United States” or first published “simultaneously in the United States and
another treaty party, whose law grants a term of copyright protection that is the
same as or longer than the term provided in the United States.” 17 U.S.C. § 101.
Simultaneous publication is defined in article 3 of the Berne Convention to include
publication within two or more countries within thirty days of first publication.2
Therefore, although United Kingdom is a “treaty party,” and although its
term of copyright protection is the same as that of the United States,3 the
2

See BCIA, art. 3(4), available at http://www.wipo.int/export/sites/
www/treaties/en/ip/berne/pdf/trtdocs_wo001.pdf (last visited Apr. 27, 2011).

3

Compare Copyright, Designs and Patent Act of 1988, Nov. 15, 1988, c. 48, ch. 1
(12) (copyright term in United Kingdom for literary works subsists to 70 years
after death of creator), available at http://www.legislation.gov.uk/
ukpga/1988/48/contents (last visited Apr. 27, 2011), with 17 U.S.C. § 102 (same).
874754.1

5

registration requirement of section 411(a) does not apply where a work is first
published in the United Kingdom and is not published within thirty days in the
United States. That is precisely the case with the works at issue here, which were
first published by one of the Plaintiffs in the United Kingdom more than thirty
days prior to publication in the United States. To the extent Plaintiffs make that
showing, no proof of registration is required for such works, and Defendants’
objection to the contrary should be overruled.
III.

PLAINTIFFS ARE NOT REQUIRED TO PROVIDE DEFENDANTS
WITH DEPOSIT COPIES OF THE ALLEGEDLY INFRINGED
WORKS
Defendants object to works listed on the Joint Filing on the ground that

Plaintiffs did not provide them with a “deposit copy” of the work. However,
because there is no such legal requirement, and, further, because the deposit copy
is, by definition, deposited with the Copyright Office in connection with the
copyright registration application and not retained by Plaintiffs, the objection has
no merit.
Section 408 of the Copyright Act provides that the copyright owner may
obtain a copyright registration by depositing two copies of the best edition of a

874754.1

6

work, along with the application and fee specified by section 409 and 708.4 17
U.S.C. § 408. The deposit copy is, by definition, a copy that has been deposited
with the Copyright Office (and thus is not available to be provided to the defendant
or, for that matter, to the Court).
There is no requirement, in the statute or anywhere else, that a deposit copy
be provided to the defendant in an infringement action.5 To make out a prima facie
case of copyright infringement, a plaintiff must show only that it “(1) owns a valid
copyright in the work and (2) defendants copied protected elements from the
work.” Saregama, 2011 WL 1103337, at *13. Plaintiffs have produced author
contracts and registration materials, among other things, that establish these
elements and provide full information as to the title, author, edition, publication
date, etc. of the works at issue. This evidence is all that is necessary to identify the
works at issue and to satisfy the first element of Plaintiffs’ claims; deposit copies
would not provide any additional (much less legally required) information.6

4

The statute provides that the deposit requirement is not a condition of copyright
protection. 17 U.S.C. § 407(a).
5

As demonstrated above, works that are not “United States works” do not need to
be registered to be protected in U.S. courts; for such works there are by definition
no deposit copies.

6

Despite having no obligation to do so, Plaintiffs provided Defendants with a copy
of each work at issue in the suit that was available to them. For certain works,

874754.1

7

In any event, the Library of Congress provides public access to deposit
copies, which are therefore as available to Defendants as they are to Plaintiffs.7 A
requirement that Plaintiffs produce deposit copies of the works would be
particularly unwarranted here, moreover, given that GSU’s copyright policy – on
which Defendants’ otherwise rely to defend their conduct – specifically requires
that “[t]he instructor, library or other unit of the institution must possess a lawfully
obtained copy of any material submitted for electronic reserves.” Defendants’
Proposed Trial Exhibit 13 at 9, a copy of which is attached hereto as Exhibit A. In
other words, a copy of the work already should be in Defendants’ possession or
control.
CONCLUSION
For the foregoing reasons, the Court should overrule the following
objections Defendants have interposed to the evidence of alleged infringements on
the Joint Filing: (1) that copyright ownership is required to confer standing to bring

however (for example, where the print edition of the book had sold out), Plaintiffs
no longer had print copies in their possession and informed Defendants of this fact.
These are the works to which Defendants have lodged their “deposit copy”
objection.
7

See United States Copyright Office, Obtaining Access to and Copies of Copyright
Office Records and Deposits (Circular 6), available at
http://www.copyright.gov/circs/circ06.pdf (last visited Apr. 27, 2011).

874754.1

8

a copyright infringement claim; (2) that copyright registration is required for works
first published outside the United States; and (3) that Plaintiffs were required to
provide Defendants with a deposit copy of each allegedly infringed work.
Respectfully submitted, this 28th day of April, 2011.
/s/ John H. Rains IV
Edward B. Krugman
Georgia Bar No. 429927
John H. Rains IV
Georgia Bar No. 556052
BONDURANT, MIXSON & ELMORE, LLP
1201 West Peachtree Street NW
Suite 3900
Atlanta, GA 30309
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
R. Bruce Rich (pro hac vice)
Randi Singer (pro hac vice)
Jonathan Bloom (pro hac vice)
Todd D. Larson (pro hac vice)
WEIL, GOTSHAL & MANGES LLP
767 Fifth Avenue
New York, New York 10153
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
Attorneys for Plaintiffs
874754.1

9

CERTIFICATE OF SERVICE
I hereby certify that I have this day filed the foregoing PLAINTIFFS’
MOTION IN LIMINE TO OVERRULE OBJECTIONS TO EVIDENCE OF
ALLEGED INFRINGEMENTS with the Clerk of Court using the CM/ECF
filing system which will automatically send e-mail notification of such filing to the
following attorneys of record:
Stephen M. Schaetzel, Esq.
Kristen A. Swift, Esq.
C. Suzanne Johnson, Esq.
KING & SPALDING
1180 Peachtree Street
Atlanta, Georgia 30309
Kristina M. Quicker, Esq.
BALLARD SPAHR, LLP
999 Peachtree Street, Suite 1000
Atlanta, GA 30309
Anthony B. Askew, Esq.
LAW OFFICE OF ANTHONY B. ASKEW
211 Townsend Place
Atlanta, GA 30327
Mary Jo Volkert, Esq.
Assistant S. Attorney General
40 Capitol Square
Atlanta, Georgia 30334
This 28th day of April, 2011.
/s/ John H. Rains IV
John H. Rains IV
874754.1

10