Cambridge University Press et al v. Patton et al

Filing 288

RESPONSE in Opposition re 277 MOTION in Limine TO EXCLUDE EVIDENCE OF ALLEGED INFRINGEMENT OF IMPROPERLY-ASSERTED COPYRIGHTS filed by Cambridge University Press, Oxford University Press, Inc., Sage Publications, Inc.. (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,
-vMARK P. BECKER, in his official
capacity as Georgia State University
President, et. al.
Defendants.

PLAINTIFFS’
OPPOSITION TO DEFENDANTS’
MOTION IN LIMINE TO
EXCLUDE EVIDENCE OF ALLEGED INFRINGEMENT OF
IMPROPERLY-ASSERTED COPYRIGHTS
Plaintiffs Cambridge University Press, Oxford University Press, Inc.,
and SAGE Publications, Inc. (collectively, “
Plaintiffs” hereby respond to
)
Defendants’
Motion in Limine to Exclude Evidence of Alleged Infringement of
Improperly-Asserted Copyrights, filed April 29, 2011 (hereinafter “ Mot.”
Def.
).
Defendants’
arguments that Plaintiffs have not met the registration requirement or
proven ownership for every work on the parties’
March 15, 2011 joint filing of

877914.1

alleged infringements are either factually misleading, legally wide of the mark, or,
at best, premature. They are also essentially irrelevant. Copyright plaintiffs
routinely obtain injunctions that protect against unlawful takings of all of their
works by proving that a small sample of those works –
often not more than five or
ten –
was infringed as part of a larger, ongoing pattern and practice of
infringement. See, e.g., Pac. & S. Co. v. Duncan, 744 F.2d 1490 (11th Cir. 1984)
(issuing injunction covering all Plaintiff works based on evidence of infringement
of one newscast); Princeton Univ. Press v. Mich. Document Servs., Inc., 99 F.3d
1381, 1387 (6th Cir. 1996) (issuing injunction based on six enumerated copyright
infringement claims from three publishers): Basic Books, Inc. v. Kinko’Graphics
s
Corp., 758 F. Supp. 1522 (S.D.N.Y. 1991) (issuing injunction based on twelve
examples of infringement from six publishers). Even to the extent a handful of the
nearly 100 infringements identified on the Joint Filing were found to suffer a
technical deficiency, the evidence concerning the remainder of the Joint Filing
works more than suffices to demonstrate Plaintiffs’
entitlement to an injunction
requiring reformation of the challenged copying practices at GSU.
BACKGROUND
The Court’August 11 and 12, 2010 Orders directed Plaintiffs to produce a
s
list of claimed infringements of their works during the Maymester 2009, Summer
877914.1

2

2009, and Fall 2009 terms along with specified information relating to each
claimed infringement (the “
August Submission” Following a November 5, 2010
).
scheduling conference, the Court ordered additional discovery related to the
August Submission and directed the parties to prepare an updated version of that
list informed by the additional discovery. Docket No. 240 at 3. The updated list
was jointly filed on March 15, 2011 (the “
Joint Filing” Docket No. 266.
).
While all works identified on Plaintiffs’
original Complaint and Amended
Complaint were registered with the U.S. Copyright Office, a small number of
works on the August Submission were not yet registered at the time of that
Submission. Plaintiffs subsequently registered them on an expedited basis, and in
February 2011, produced the copyright registration certificates to Defendants –
as
well as copies of the books deposited with the Copyright Office during the
registration process. The copyright registration information for these works was
included on the March 15 Joint Filing. When the discovery ordered by the Court
revealed that other Plaintiff works beyond those identified in the August
Submission had been distributed to GSU students in 2009, Plaintiffs registered
those that had not previously been registered as well and produced copies of the
books deposited with the Copyright Office.

877914.1

3

Because this latter set of infringements was not revealed to Plaintiffs until
the additional discovery ordered by the Court,1 the registration certificates were not
yet available as of the date of the Joint Filing, so Plaintiffs stated: “
Registration
2
request filed with Copyright Office; certificate expected by 4/8/11.” When the

registration certificates were delivered to Plaintiffs in late March, Plaintiffs
produced copies to Defendants immediately. Defendants’
claim on April 29 that
Plaintiffs had not produced certain registration certificates “ of the Parties’
as
March 15, 2011 joint filing,”
Def. Mot. 5 n.1, fails to mention that most of those
certificates were produced very shortly thereafter to Defendants, who have had
them for more than a month. Presently, only four works on the Joint Filing (other
than foreign works where registration is not required) remain unregistered.3

1

Specifically, the works were distributed by Professor Kim during the 2009
semester via uLearn, and therefore did not appear on the ERes reports that had
previously been produced by Defendants. They are identified as No. 4-10 on
Exhibit A to Defendants’
motion.
2

In order to expedite the registration process, which can take as long as 12-18
months under normal procedures, Plaintiffs utilized the Copyright Office’“
s special
handling”
procedures, which are designed in part to provide for rapid registration
of works involved in litigation. Even with special handling, however, the
certificates were not received until late March.
3

See Plaintiffs’
Motion in Limine to Overrule Objections to Evidence of Alleged
Infringements, April 28, 2011, Docket No. 273 (regarding protection of nonregistered foreign works under Berne Convention). The only remaining
unregistered works include The Cambridge Companion to Schubert, The
877914.1

4

Although there is no legal requirement to do so, Plaintiffs have provided
Defendants with copies of almost every work from the Joint Filing (unless the
book or particular edition was out of stock), including those that were recently
registered.
ARGUMENT
I.

PLAINTIFFS HAVE REGISTERED AND PRODUCED
CERTIFICATES OF REGISTRATION FOR SEVEN OF THE
WORKS DEFENDANTS IDENTIFY AS UNREGISTERED
Defendants’
motion is carefully phrased, claiming that Plaintiffs had not

produced certain registration certificates “ of the Parties’
as
March 15, 2011 joint
filing.”Def. Mot. 5 n.1. Plaintiffs did, however, produce seven of the requested
certificates in the last week of March and first week of April, so the statement that
Plaintiffs have failed, “ the eve of trial,” provide evidence that a registration
on
to
has issued for the works identified in their motion, Def. Mot. at 5-6 and Ex. A, is
simply wrong as to seven of those works. In addition, Plaintiffs have confirmed
that an eighth work identified in Defendants’
Exhibit, The Operas of Charles
Gounod, is a foreign work first published in the United Kingdom, and thus exempt

Cambridge Companion to Berlioz, The Fragility of Goodness, and The Cambridge
Companion to Bach.
877914.1

5

from the registration requirement. See Declaration of Niko Pfund in Opposition to
Defendants’
Motion In Limine May 9, 2011 ¶ 16.
The timing of the production of these certificates does not prejudice
Defendants in any way. As an initial matter, the registration of these works was
delayed only because the works were not known to Plaintiffs until they conducted
the recent round of discovery ordered by the Court, including a deposition of
Professor Kim on February 4, 2011, in which she confirmed she had in fact used
the works at issue in her course. Plaintiffs acted expeditiously to register the works
in the wake of that deposition and alerted Defendants in the Joint Filing that
Plaintiffs had sought registration for the works and that the certificates were
expected by early April. Indeed, there is no reason to exclude evidence relating to
GSU’infringements of these works, particularly since other sections of that filing,
s
as well as Plaintiffs’
document production, provided Defendants with all the
pertinent information (author, title, ownership, etc.) subsequently included in the
certificates, and Defendants did not have to make any filings or conduct any
depositions without them.4
4

M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486 (11th Cir. 1990) does
not dictate a different result. As Defendants themselves acknowledge in their
motion, the holding of that case was overturned in relevant respects by the
Supreme Court in Reed Elsevier, Inc. v. Muchnick, 130 S. Ct. 1237 (2010). To the
extent M.G.B. Homes survives, it stands for the common-sense proposition that
877914.1

6

Nor is there reason to exclude evidence as to the infringement of the four
works that remain unregistered. In Reed Elsevier, Inc. v. Muchnick, 130 S. Ct.
1237 (2010), the Supreme Court held that failure to register a work does not strip a
court of jurisdiction over a copyright claim, and upheld a settlement agreement
approved by the district court comprised entirely of unregistered works. Id. at
1248-49. Furthermore, injunctive relief in copyright actions routinely extends to
unregistered (and even yet-to-be-created) works. See e.g., Pac. & S. Co. v.
Duncan, 744 F.2d at 1499 n.17. Because the requested injunctive relief sought
here would extend to unregistered works, evidence of infringement as to the four
unregistered works is clearly relevant and should not be excluded.

where a registration for a work is granted by the Copyright Office after
commencement of a suit, the proper procedural response is not to dismiss the
plaintiff’claims as to that work (and require Plaintiffs to immediately re-file
s
essentially the same case), but merely to allow the plaintiff to amend the pleadings
as necessary to reflect the new registration. See 903 F.2d at 1489 (stating that “
[i]t
is too late in the day and entirely contrary to the spirit of the Federal Rules of Civil
Procedure for decisions on the merits to be avoided on the basis of such mere
technicalities,” noting that the defendant was not prejudiced by the
and
amendment). The M.G.B. Homes court’flexible approach is particularly apt here,
s
where the Court has directed the parties to focus on infringements that occurred
more than a year after the original complaint was filed and thus required the postcomplaint registration of certain works.
877914.1

7

II.

THE REGISTRATION REQUIREMENT OF SECTION 411(a) DOES
NOT REQUIRE PLAINTIFFS IN AN INFRINGEMENT ACTION TO
DEMONSTRATE COMPLIANCE WITH EVERY STEP OF THE
REGISTRATION PROCESS
Defendants press the argument that for certain works, Plaintiffs “
have not

provided either a deposit copy . . . or other evidence proving that a proper deposit
5
was made.” Def. Mot. at 7. Defendants’
argument –
which fails even to identify

which works it purports to exclude on this theory – without merit. First, while
is
Plaintiffs are obviously unable to provide the actual deposit copies, as those
copies were deposited with the Copyright Office in accordance with requirements
of federal copyright law, Plaintiffs did provide Defendants with copies of the
recently registered works (identical to those deposited with the Copyright Office),
as well as copies of most of the other works on the Joint Filing. Moreover,
because depositing a copy is a prerequisite to registration, the registration
certificates produced by Plaintiffs are themselves evidence that Plaintiffs
deposited copies with the Copyright Office, which otherwise would not have
granted the certificates. As to works first published in the United Kingdom, U.S.
5

Defendants appear to argue that both registration and proof of compliance with
the steps necessary to obtain registration must be demonstrated, i.e., that Plaintiffs
were required to provide evidence of having deposited copies with the Copyright
Office even in those instances where Plaintiffs produced the actual registration
certificate that the Copyright Office issued after reviewing Plaintiffs’
application
for registration.
877914.1

8

copyright registration is not required6 and thus no “
deposit”
was required either;
any requirement to comply with U.S. registration formalities would undermine the
protections granted to those works in the U.S. under the Berne Convention.
In any event, substantive copyright law simply does not require a plaintiff
who alleges copyright infringement to prove its compliance with the formalities of
the registration process, including the submission of deposit copies, before it can
proceed. To establish copyright infringement, the plaintiff must show that (i) it
owns a valid copyright in the allegedly infringed work(s) and (ii) the defendant
copied protected elements of the work(s). Peter Letterese & Assocs., Inc. v.
World Inst. of Scientology Enters., Int’ 533 F.3d 1287, 1300 (11th Cir. 2008).
l,
“
[O]nce [a plaintiff] produces a copyright certificate he establishes a prima facie
case of validity of his copyright and the burden of production shifts to the
defendant to introduce evidence of invalidity.”
Original Appalachian Artworks,
Inc. v. Toy Loft, Inc., 684 F.2d 821, 826 (11th Cir. 1982).
Nor can such a requirement be inferred from the registration requirement of
17 U.S.C. § 411(a). That provision merely establishes that U.S. works need to be
registered, not that Plaintiffs have an affirmative burden to prove that they
6

See Plaintiffs’
Motion in Limine to Overrule Defendants’
Objections to Evidence
of Alleged Infringements, Docket No. 273, at Part II and Part III (addressing the
foreign works and deposit copy issues).
877914.1

9

satisfied each of the prerequisites necessary to obtain the registration in the first
place. St. Luke’Cataract & Laser Inst. v. Sanderson, 573 F.3d 1186, 1201 (11th
s
Cir. 2009), reiterates only the basic requirement that a copyright owner must have
“
complied”
with registration procedures to assert an infringement claim; it does
not conclude, as Defendants suggest, that a “
copyright owner cannot assert a
copyright without proving that it has made a proper deposit.”Def. Mot. 6
(emphasis added).7 Defendants have presented no case where copyright plaintiffs
had to provide proof of having made a deposit as part of their infringement action.
The copyright law provides that if a work is registered within five years of
its publication, the certificate is prima facie evidence of the validity of the
copyright and the facts stated in the certificate. 17 U.S.C. § 410(c). Defendants
suggest that because Plaintiffs registered certain works outside the five-year

7

Defendants’
confusion on this point appears to stem from Dream Custom Homes,
Inc. v. Modern Day Construction, Inc., No. 8:08-CV-1189, 2011 WL 976420
(M.D. Fla. Feb. 22, 2011), a district court case suggesting that compliance with
registration procedures, including the filing fee and the deposit copy, must be
“
shown.”Id. at *9. But the district court’source for that proposition, Donald
s
Frederick Evans & Assocs. v. Continental Homes, Inc., 785 F.2d 897, 903 (11th
Cir. 1986), simply restates the Section 411(a) registration requirements and
provides some explanation as to what obtaining a registration entails. Id. (quoting
section 411(a)). Neither case required plaintiffs to prove that they deposited
copies; rather, the court relied on the plaintiff’registration certificates alone to
s
establish the validity of its copyrights. Dream Custom Homes, 2011 WL 976420,
at *10.
877914.1

10

window, the registration cannot be taken as “
prima facie proof of a proper deposit
copy,” that Plaintiffs must therefore provide independent evidence of having
and
made the required deposit. Def. Mot. at 7 n.2. It is unclear what additional
evidence Defendants seek –
presumably, they are not suggesting that Plaintiffs
must produce photographs of the copies being deposited with the Copyright
Office. In any event, the Copyright Office will not issue the certificate without
receiving deposit copies, so the mere fact that it issued the registration certificates
–
whether within five years of publication or later –
proves that Plaintiffs
complied with the requisite formalities.8
III.

EVIDENCE SHOULD NOT BE EXCLUDED BASED SOLELY ON
DEFENDANTS’
UNSUPPORTED ASSERTIONS REGARDING
PLAINTIFF OWNERSHIP OF WORKS
Defendants’
argument that the Court should exclude evidence related to

certain Plaintiff works because Plaintiffs allegedly have failed to produce evidence
of ownership of chapters authored by contributors to those works, Def. Mot. at 8-9,
is in certain instances factually incorrect and, in any event, premature. It is
improper to preclude evidence as to certain works based merely on the assertions
8

Even where the work is registered more than five years after publication, the
410(c) presumption is not necessarily lost; rather, it is left to the district court’
s
discretion to decide whether to maintain it. 17 U.S.C. § 410(c); see also 3 Nimmer
on Copyright at § 12.11[A][1] (2010) (“
Upon receipt of some evidence for
plaintiff’ownership, courts typically extend the presumption.”
s
).
877914.1

11

of Defendants’
counsel that certain contracts have not been produced, particularly
where some of these assertions are demonstrably inaccurate. For example,
Defendants are simply wrong to suggest that Plaintiffs failed to provide contributor
assignments for the SAGE Handbook of Qualitative Research and Handbook of
Feminist Research. Def. Mot. at 9 n.4. Those assignments can be found at Pl. Tr.
Ex. 268-272 and 274-281 (assignments for 13 of the 14 chapters of the Handbook
of Qualitative Research identified on Joint Filing) and 245-246 (assignments for 2
of the 3 chapters of the Handbook of Feminist Research identified on Joint Filing).9
Furthermore, as the accompanying declaration of Oxford’Niko Pfund
s
makes clear, providing an agreement from a contributor is not the only way to
show an assignment of rights; such ownership is evidenced through editor
contracts and copyright registration certificates, and through Mr. Pfund’
s
knowledge of the standard practices of Oxford University Press and of the
circumstances surrounding particular works at issue.10 Witnesses from SAGE and

9

Carol Richman of SAGE will testify that the two unlocated agreements would
have been identical to the fifteen work-for-hire agreements that were produced.
10

Mr. Pfund also explains that in response to Defendants’
motion, Oxford was able
to locate four additional agreements concerning works identified in the motion.
Simultaneous with this filing, Plaintiffs are producing those documents to
Defendants and filing a separate motion with the Court requesting permission to
add those works to its exhibit list.
877914.1

12

Cambridge University will likewise testify at trial as to their ownership of
contributions flagged by Defendants’
motion.
There are a small number of Oxford works identified on the Joint filing for
which Mr. Pfund is unable definitively to confirm OUP’ownership of the
s
excerpts.11 In the interest of efficient trial presentation, Plaintiffs will not present
evidence related to those works or their infringement at GSU. As earlier stated,
this should be immaterial to Plaintiffs’
entitlement to an injunction based on the
evidence to be adduced as to the substantial number of infringements.
CONCLUSION
For the foregoing reasons, the Court should deny Defendants’
Motion in all
respects.
This 9th day of May, 2011.
/s/ John H. Rains IV
Edward B. Krugman
[e-mail]
Georgia Bar No. 429927
John H. Rains IV
[e-mail]
Georgia Bar No. 556052

11

The works are Film Theory and Criticism; Social Theory: Roots & Branches;
The Gendered Society Reader; and Television: The Critical View.
877914.1

13

BONDURANT, MIXSON & ELMORE, LLP
1201 West Peachtree Street NW
Suite 3900
Atlanta, GA 30309
[phone] –
Telephone
[phone] –
Facsimile
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
Attorneys for the Plaintiffs

877914.1

14

CERTIFICATE OF SERVICE
I hereby certify that I have this day filed the foregoing PLAINTIFFS’
OPPOSITION TO DEFENDANTS’
MOTION IN LIMINE TO EXCLUDE
EVIDENCE OF ALLEGED INFRINGEMENT OF IMPROPERLYASSERTED COPYRIGHTS with the Clerk of Court using the CM/ECF filing
system which will send e-mail notification of such filing to opposing counsel as
follows:
Stephen M. Schaetzel, Esq.
Kristen A. Swift, Esq.
C. Suzanne Johnson, Esq.
Mary Katherine Bates, Esq.
KING & SPALDING
1180 Peachtree Street
Atlanta, Georgia 30309
Kristina M. Quicker, Esq.
BALLARD SPAHR, LLP
999 Peachtree Street, Suite 1000
Atlanta, Georgia 30309
Anthony B. Askew, Esq.
LAW OFFICE OF ANTHONY B. ASKEW
211 Townsend Place
Atlanta, Georgia 30327

877914.1

15

Mary Jo Volkert, Esq.
Assistant S. Attorney General
40 Capitol Square
Atlanta, Georgia 30334
This 9th day of May, 2011.
/s/ John H. Rains IV
John H. Rains IV

877914.1

16