Cambridge University Press et al v. Patton et al

Filing 289

RESPONSE in Opposition re 273 MOTION in Limine to Overrule Objections to Evidence of Alleged Infringements filed by J. L. Albert, Mark P. Becker, Kenneth R. Bernard, Jr, Larry R. Ellis, Rutledge A. Griffin, Jr, Robert F. Hatcher, C. Thomas Hopkins, Jr, W. Mansfield Jennings, Jr, James R. Jolly, Donald M. Leebern, Jr, William NeSmith, Jr, Risa Palm, Doreen Stiles Poitevint, Willis J. Potts, Jr, Neil L. Pruitt, Jr, Wanda Yancey Rodwell, Nancy Seamans, Kessel Stelling, Jr, Benjamin J. Tarbutton, III, Richard L. Tucker, Larry Walker, Philip A. Wilheit, Sr. (Attachments: # 1 Exhibit A)(Bates, Mary)

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

CAMBRIDGE UNIVERSITY PRESS,
et al.,
Plaintiffs,

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

-vMARK P. BECKER, in his official
capacity as President of Georgia State
University, et al.,
Defendants.

DEFENDANTS’ BRIEF IN OPPOSITION TO
PLAINTIFFS’ MOTION IN LIMINE TO OVERRULE
OBJECTIONS TO EVIDENCE OF ALLEGED INFRINGEMENTS

In accordance with this Court’s May 3, 2011 Order, Defendants in the
above-captioned matter hereby file this brief in opposition to “Plaintiffs’ Motion In
Limine to Overrule Objections to Evidence of Alleged Infringements” (the
“Motion,” Dkt. 273.)
On March 15, 2011, the parties submitted to the Court a joint filing detailing
the alleged copyright infringements occurring during the Maymester 2009,

Summer 2009, and Fall 2009 terms that remain at issue in this case. (See Dkt.
266.) In the joint filing, Defendants objected to Plaintiffs’ infringement allegations
on several grounds, including that Plaintiffs have failed to demonstrate copyright
ownership for several of the accused works, or have failed to provide copyright
registrations or deposit copies for several of the accused works.
I.

UNTIL PLAINTIFFS HAVE ESTABLISHED OWNERSHIP IN THE
COPYRIGHTS FOR WHICH THERE ARE ALLEGED
INFRINGEMENTS, THEY SHOULD BE PRECLUDED FROM
PRESENTING ANY EVIDENCE OF SUCH ALLEGED
INFRINGEMENTS.
Plaintiffs’ Motion misconstrues Defendants’ objections to Plaintiffs’ claims

of ownership in the copyrights of the accused works. Defendants do not contend
that an exclusive license cannot confer standing to sue for copyright infringement,
as Plaintiffs seem to allege. (See Dkt. 273 at 2-3.) Rather(without admitting the
plaintiffs’ proofs as to any work), Defendants dispute that Plaintiffs can
demonstrate ownership of the copyright for certain works based on the documents
they have produced in this case. As a result, Defendants have moved to preclude
Plaintiffs from presenting any evidence regarding the alleged infringement of
copyrights they do not appear, from the evidence they have produced, to own. (See
Defs.’ Mot. In Limine to Exclude Evidence of Alleged Infringement of

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Improperly-Asserted Copyrights and Mem. of Law in Support Thereof (Dkt. 277)
at 8-10.)
It is well-settled that, to bring a claim for copyright infringement, a plaintiff
must own a valid copyright. See 3 Melville B. Nimmer & David Nimmer, Nimmer
on Copyright § 12.02[B] (Matthew Bender, Rev. Ed.) (“[O]nly parties with
ownership rights in a copyright have standing to bring claims for its
infringement.”). Plaintiffs have failed to produce evidence to establish that
Plaintiffs (or any one Plaintiff) owns the right to enforce each of the copyrights
that are the subject of the alleged infringements (whether by assignment or by the
transfer of all substantial rights through an exclusive license).
For example, in response to Defendants’ document requests and
interrogatories relating to Plaintiffs ownership and/or licensing of the subject
works, Plaintiffs did not present a comprehensive assignment or license for the
2001 edition of The Fragility of Goodness: Luck and Ethics in Greek Tragedy and
Philosophy, which instructor Vincent Lloyd is alleged to have infringed through
use in a Fall 2009 course (See Allegation of Use, Resp. to Ct.’s Or. (Dkt. 228) Ex.
C-6.) Although on November 5, 2010, this Court ordered Plaintiffs to supplement
their responses to Defendants’ requests and interrogatories for the subject works
(Dkt. 240 at 2), Plaintiffs produced only a license for the 1986 version of the work,

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which appears to be copyrighted in the name of Plaintiff Cambridge (Exhibit A).
The 2001 version at issue in this case is copyrighted in the name of the author.
(Exhibit A at 2.)
Similarly, for A History of Feminist Literary Criticism, which is the subject
of an alleged infringement by Dr. Janet Gabler-Hover in a course in Fall 2009,
Plaintiffs produced an agreement between the publisher and the editors of the
collective work (Pls.’ Ex. 105, Pls.’ Ex. List, Dkt. 278-6 at 6), but did not produce
the individual article author’s assignment or licensure (id. (providing agreement
with another author)). Because of shortcomings such as these in the purported
rights of Plaintiffs to the exclusive right to the copyright in accused works, the
Court’s ruling on defendants’ objections is rightly reserved for trial, upon the
parties’ showings of evidence.
Because it appears from documents produced by Plaintiffs that no Plaintiff
has sufficient rights in the copyright for certain of the works that are the subject of
Plaintiffs’ allegations of infringement to maintain a claim for copyright
infringement, Defendants respectfully submit that Plaintiffs should not be
permitted to present any evidence of alleged infringement of the copyrights for
these works. (See Defs.’ Mot. In Limine (Dkt. No. 277) at 8-10.) Until the parties
have made their showings on the issue of ownership at trial, it is premature to rule

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on Defendants’ objections with regard to Plaintiffs’ ownership. Accordingly,
Plaintiffs’ motion should be denied.
II.

PLAINTIFFS HAVE NOT DEMONSTRATED THAT
SUBJECT WORKS FIRST PUBLISHED IN THE UNITED
KINGDOM QUALIFY AS FOREIGN WORKS.
Plaintiffs assert that no copyright registration is required for 24 of their

infringement allegations because the relevant works are “foreign works” under 17
U.S.C. § 104(b)(2), and not “United States work(s)” as defined in 17 U.S.C.
§§ 101, 411(a). (See Dkt. 273 at 3-6.) Accordingly, Plaintiffs request that the
Court overrule Defendants’ objection related to Plaintiffs’ failure to provide a
registration for these works. (Id. at 6.)
Contrary to Plaintiffs’ assertion, Defendants’ objection is proper for at least
two reasons. First, Plaintiffs have not yet demonstrated that the subject works are
“foreign works” under the statute. Plaintiffs acknowledge that, if a work is a
“United States work” rather than a “foreign work,” preregistration or registration
of the copyright must be made in accordance with the Copyright Act. (See id. at 45.) A work is a “United States work” if it was first published in the United States
or if it was first published in a Berne Convention signatory country and within 30
days thereafter was then published in the United States. See 17 U.S.C. § 101.

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Plaintiffs have not yet demonstrated that United States publication occurred
more than 30 days after publication in the United Kingdom. Thus, Plaintiffs have
not yet established, as is their burden, that the works at issue are “foreign works”
exempt from the registration requirement, yet enforceable under the law. See 2
Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 7.16[B][1][b]
n.83.1 (stating that a plaintiff bears the burden to prove his work is of foreign,
Berne-signatory-nation origin).
Second, in the absence of copyright registration, Plaintiffs must demonstrate
the copyrightability of the works at issue, which they have not done. For foreign
works, plaintiffs do not enjoy the presumptions that exist in the case of a valid U.S.
registration, including the prima facie presumption of copyright validity.
2 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 7.16[B][1][c];
see Latin Am. Music Co. v. Archdiocese of San Juan of the Roman Catholic &
Apostolic Church, 194 F. Supp. 2d 30, 39 (D.P.R. 2001) (noting “[t]he benefits of
avoiding United States Registration are slight compared to the costs associated
with not registering--notably giving up attorney’s fees, statutory damages and the
prima facie presumption of copyright validity”). A plaintiff seeking to enforce the
copyrights of a foreign work thus must provide proof that the work is
copyrightable. See Ward v. Nat’l Geographic Soc., 208 F. Supp. 2d 429, 445

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(S.D.N.Y. 2002); see also Clarus Transphase Scientific, Inc. v. Q-Ray, Inc. No. 06
C 4634, 2006 WL 4013750, at *20 (N.D. Ill. Oct. 6, 2006) (explaining that without
a certificate of copyright registration “there is no presumption in [plaintiff’s] favor,
the district court makes an independent determination regarding [plaintiff’s]
ownership of a valid copyright; a de novo determination as to whether plaintiff’s
work is copyrightable . . . . That means [plaintiff] must provide proof on this
issue”); Morelli v. Tiffany and Co., No. Civ. A. 00-1961, 2001 WL 179898, at *1
(E.D. Pa. Jan. 10, 2001) (“The fact that plaintiff does not have a copyright
registration . . . dictates that the burden of proof is on him in this infringement
action to establish the copyrightability of his [work].”). Plaintiffs here have not yet
made such a showing.
Because of the factual showing Plaintiffs must make before the Court can
rule on these objections, Defendants respectfully submit that Plaintiffs’ request that
these objections be overruled is premature, and that the Court should reserve ruling
on these objections until trial.

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III.

BY FAILING TO PROVIDE DEPOSIT COPIES FOR CERTAIN
WORKS, PLAINTIFFS HAVE FAILED TO ESTABLISH
COMPLIANCE WITH THE COPYRIGHT REGISTRATION
REQUIREMENTS, A PREREQUISITE TO ASSERTING A CAUSE
OF ACTION FOR COPYRIGHT INFRINGEMENT.
To bring a copyright infringement suit, a plaintiff must have complied with

the copyright registration requirements. See 17 U.S.C. §§ 410(c), 411(a). Where,
for example, Plaintiffs are not entitled to a presumption that a proper deposit copy
was submitted to the Copyright Office, they must produce such a copy for
consideration by this Court. As explained in “Defendants’ Motion In Limine to
Exclude Evidence of Alleged Infringement of Improperly-Asserted Copyrights and
Memorandum of Law in Support Thereof” (Dkt. 277), there are at least five works
among Plaintiffs’ infringement assertions for which the copyright registration was
still pending as of the parties’ March 15, 2011 joint filing. (See Dkt. 277 at 7 &
n.2.) In cases such as these, where Plaintiffs do not enjoy the presumption of
validity, Plaintiffs will need to demonstrate compliance with the copyright
registration requirements, including provision of a proper deposit copy for the
work at issue.1

1

Defendants do not intend to assert their objections regarding Plaintiffs’
failure to provide deposit copies to Defendants during discovery at trial.
Defendants note, however, that it may be necessary for Plaintiffs to introduce the
deposit copies to establish their prima facie cases for infringement.
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Because any ruling on this objection first requires the presentation of
evidence to this Court, Defendants respectfully submit that ruling on Defendants’
objections is best reserved for trial.

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Respectfully submitted, this 9th day of May, 2011.
SAMUEL S. OLENS
Georgia Bar No. 551540
Attorney General
R. O. LERER
Georgia Bar No. 446962
Deputy Attorney General
DENISE E. WHITING-PACK
Georgia Bar No. 558559
Senior Assistant Attorney General
MARY JO VOLKERT
Georgia Bar No. 728755
Assistant Attorney General

/s/ Mary Katherine Bates
Stephen M. Schaetzel
Georgia Bar No. 628653
Mary Katherine Bates
Georgia Bar No. 384250
KING & SPALDING LLP
1180 Peachtree Street, N.E.
Atlanta, GA 30309
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]

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Anthony B. Askew
Special Assistant Attorney General
Georgia Bar No. 025300
MCKEON, MEUNIER, CARLIN &
CURFMAN, LLC
817 W. Peachtree Street, NW
Suite 900
Atlanta, GA 30308
Telephone: [phone]
Facsimile: [phone]
Katrina M. Quicker
Georgia Bar No. 590859
BALLARD SPAHR LLP
999 Peachtree Street, Suite 1000
Atlanta, GA 30309-3915
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Attorneys for Defendants

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CERTIFICATE OF COMPLIANCE
Pursuant to Rule 7.1D of the Local Rules of the Northern District of
Georgia, counsel for Defendants certifies that the foregoing DEFENDANTS’
BRIEF IN OPPOSITION TO PLAINTIFFS’ MOTION IN LIMINE TO
OVERRULE OBJECTIONS TO EVIDENCE OF ALLEGED
INFRINGEMENTS was prepared in a font and point selection approved by this
Court and authorized in Local Rule 5.1C.

/s/ Mary Katherine Bates
Mary Katherine Bates

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

CAMBRIDGE UNIVERSITY PRESS,
et al,
Plaintiffs,

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

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

CERTIFICATE OF SERVICE
The undersigned hereby certifies that on this 9th day of May, 2011, I have
electronically filed the foregoing DEFENDANTS’ BRIEF IN OPPOSITION TO
PLAINTIFFS’ MOTION IN LIMINE TO OVERRULE OBJECTIONS TO
EVIDENCE OF ALLEGED INFRINGEMENTS with the Clerk of the Court
using the CM/ECF system, which will automatically send e-mail notification of
such filing to the following attorneys of record:

Edward B. Krugman
[e-mail]
Georgia Bar No. 429927
Corey F. Hirokawa
[e-mail]
Georgia Bar No. 357087
John H. Rains IV
[e-mail]
Georgia Bar No. 556052

R. Bruce Rich
Jonathan Bloom
Randi Singer
Todd D. Larson
WEIL, GOTSHAL & MANGES LLP
767 Fifth Avenue
New York, NY 10153
Telephone: [phone]
Facsimile: [phone]

BONDURANT, MIXSON &
ELMORE, LLP
1201 West Peachtree Street N.W.
Suite 3900
Atlanta, GA 30309
Telephone: [phone]
Facsimile: [phone]

/s/ Mary Katherine Bates
Mary Katherine Bates
Georgia Bar No. 384250
KING & SPALDING LLP
1180 Peachtree Street, N.E.
Atlanta, GA 30309
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]

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