Cambridge University Press et al v. Patton et al

Filing 302

REPLY in Support of 277 MOTION in Limine TO EXCLUDE EVIDENCE OF ALLEGED INFRINGEMENT OF IMPROPERLY-ASSERTED COPYRIGHTS filed by J. L. Albert, Mark P. Becker, Kenneth R. Bernard, Jr, James A. Bishop, Hugh A. Carter, Jr, William H. Cleveland, Frederick E. Cooper, Larry R. Ellis, Rutledge A. Griffin, Jr, Robert F. Hatcher, Ronald Henry, C. Thomas Hopkins, Jr, Charlene Hurt, Felton Jenkins, W. Mansfield Jennings, Jr, James R. Jolly, Donald M. Leebern, Jr, Eldridge McMillan, William NeSmith, Jr, Risa Palm, Carl V. Patton, 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, Allan Vigil, Larry Walker, Philip A. Wilheit, Sr(Schaetzel, Stephen) Modified on 5/12/2011 in order to correct event type and filer information (ank).

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.

REPLY IN SUPPORT OF DEFENDANTS’ MOTION IN LIMINE TO
EXCLUDE EVIDENCE OF ALLEGED INFRINGEMENT OF
IMPROPERLY-ASSERTED COPYRIGHTS
Pursuant to Local Rule 7.1(C) and the Court’s May 5, 2011 Order (Dkt. No.
282) directing the parties to file replies, if any, by May 11, 2011, Defendants Mark
P. Becker, et al., hereby file this reply in support of their Motion In Limine To
Exclude Evidence Of Alleged Infringement Of Improperly-Asserted Copyrights
(Dkt. No. 277) (“Motion”). In the Motion, Defendants asked the Court to exclude
evidence of alleged infringement relating to copyrights for which Plaintiffs have
not shown compliance with the mandatory preconditions for suit.

Plaintiffs’ Opposition To Defendants’ Motion In Limine To Exclude
Evidence Of Alleged Infringement Of Improperly-Asserted Copyrights (Dkt. No.
288) (“Opposition”) tacitly admits the core of Defendants’ motion. Plaintiffs do
not contend that evidence relating to copyrights that are not assigned to them is
relevant or admissible. Plaintiffs also do not provide any authority suggesting that
evidence of unregistered works is relevant or admissible.
Instead Plaintiffs argue—without citing any authority—that this Court
should overlook the absolute requirement that Plaintiffs have a signed writing
evidencing an assignment or exclusive license from the author before they can
bring suit. Plaintiffs also suggest that this Court should admit evidence of alleged
infringement of works that Plaintiffs admit are not registered, and therefore cannot
be asserted in a copyright infringement action. Plaintiffs’ arguments miss the
mark, and consequently, Defendants respectfully request that the Court grant the
Motion.
ARGUMENT AND CITATION OF AUTHORITIES
I.

Evidence Relating To The Alleged Infringement Of Works For Which
Plaintiffs Cannot Prove Ownership Should Be Excluded.
It is black-letter law that a party does not have standing to maintain suit for

the infringement of a copyright that it does not own or have an exclusive license
for. See Imperial Residential Design, Inc. v. Palms Dev. Group, Inc., 70 F.3d 96,
2

99 (11th Cir. 1995). The Copyright Act requires that an assignment be evidenced
by a signed writing. 17 U.S.C. § 204(a) (“A transfer of copyright ownership, other
than by operation of law, is not valid unless an instrument of conveyance, or a note
or memorandum of the transfer, is in writing and signed by the owner of the rights
conveyed or such owner's duly authorized agent.”). This requirement of a signed
writing applies to both assignments and exclusive licenses. Imperial Residential
Design v. Palms Dev. Group, 29 F.3d 581, 583 (11th Cir. 1994). Plaintiffs do not
dispute this black letter principle.
Instead, Plaintiffs accuse Defendants of making assertions that are
“demonstrably inaccurate,” while simultaneously admitting the truth of
Defendants’ contentions—that Plaintiffs do not have assignments for all of the
asserted contributions of the collective works Defendants’ have identified. 1 (Opp.
at 12.) In addition to contradicting their own ad hominem attack on Defendants,
Plaintiffs’ Opposition is replete with several admissions of assignments they
cannot prove.

1

As Defendants noted on opening, the works identified therein were merely
examples of works for which Plaintiffs had not provided evidence of ownership.
(Mot. at 8 n.3, 9 n.4.) Defendants contend that until Plaintiffs have made a
threshold showing of a proper assignment for any given work, evidence relating to
the alleged infringement of such work is irrelevant and inadmissible. (Mot. at 910.)
3

Specifically, Plaintiffs admit that they do not have agreements for several
additional works. (Opp. at 12 n.9.) Plaintiffs further admit that they have not
produced or identified several other assignments for works at issue. (Opp. at 12
n.10; Pfund Decl. ¶¶ 5, 7, 8, 9.) Finally, Oxford admits that some of the works at
issue are assigned not to Oxford, but to Oxford’s affiliate in the United Kingdom. 2
(Pfund Decl. ¶¶ 10, 11, 12, 13, 14, 15.) Mr. Pfund’s declaration asserts that “OUP
has the exclusive right to distribute OUP UK works in the United States.” (Pfund
Decl. ¶ 11.) Of course, Mr. Pfund’s bare assertion of the “exclusive right” Oxford
has purportedly obtained is irrelevant in view of the fact that the plaintiff here
(Oxford) has not provided admissible evidence of a written instrument transferring
those exclusive rights to it. Imperial Residential Design, 29 F.3d at 583.
In an effort to sidestep their lack of evidence, Plaintiffs advance the curious
argument that industry practice and oral testimony obviates the requirement of a
written assignment. (Opp. at 12-13.) Plaintiffs provide no legal support for this

2

Although Defendants’ contend that several works from each Plaintiff are
lacking proper assignment, Plaintiffs’ opposition only includes a declaration for
Oxford. Plaintiffs provide nothing more than bare assertions about the testimony
anticipated to be offered on behalf of the other plaintiffs, SAGE and Cambridge.
Notably, however, even Plaintiffs’ bare arguments do not include a contention that
the testimony from SAGE and Cambridge will involve the introduction of signed,
written assignments or exclusive licenses (which would be objectionable, as they
have not been produced).
4

position. 3 Indeed, the law is clear: a signed assignment (or exclusive license) in
writing is required for Plaintiffs to have standing to assert copyrights. 17 U.S.C. §
204(a); Imperial Residential Design v. Palms Dev. Group, 29 F.3d 581, 583 (11th
Cir. 1994). For this reason, Plaintiffs’ arguments and Mr. Pfund’s declaration are
largely irrelevant to the issue—that Plaintiffs are alleging infringement of
copyrights they cannot prove that they own.

Consequently, Defendants

respectfully request that the Court grant the motion with respect to such works.
II.

This Court Should Exclude Evidence Of The Alleged Infringement Of
Copyrights For Which Statutory Formalities Have Not Been Satisfied.
The Copyright Act is clear—registration is required to maintain a suit for

copyright infringement. 17 U.S.C. § 411(a). The case law on point is similarly
clear—registration is a mandatory precondition to a copyright claim. See Dream
Custom Homes, Inc. v. Modern Day Constr., Inc., No. 8:08-CV-1189-T-17AEP,
2011 U.S. Dist. LEXIS 18268, at *25 (M.D. Fla. Feb. 22, 2011); Marketing Tech.
Solutions, Inc. v. Medizine LLC, No. 09 Civ. 8122 (LMM), 2010 U.S. Dist. LEXIS
3

In fact, the best evidence rule requires that Plaintiffs produce the agreement
(or a duplicate) to prove its contents. Fed. R. Evid. 1002, 1003. Plaintiffs do not
contend that these missing agreements are “lost,” and even assuming Plaintiffs
make such a contention, their loss would be their own fault, and the exception of
Fed. R. Evid. 1004(1) would not apply. See Summerlin v. Georgia-Pacific Corp.
Life, Health and Accident Plan, 366 F. Supp. 2d 1203, 1211-1212 (M.D. Ga. 2005)
(refusing to allow a party to introduce secondary evidence of the terms of a
missing agreement, despite evidence that the party’s administrative procedures
would have necessitated the existence of such an agreement).
5

50027, at *15-16 (S.D.N.Y. Apr. 23, 2010). See also Reed Elsevier v. Muchnick,
130 S. Ct. 1237 at 1249 (2010). Plaintiffs do not dispute this point.
Plaintiffs admit that several works at issue remain unregistered. 4 (Opp. At
5.) As such, Plaintiffs necessarily admit that the statutory preconditions for these
works remain unsatisfied. The only post-Reed Elsevier authority on point suggests
that dismissal is the proper procedural step for unregistered copyrights. Marketing
Tech. Solutions, 2010 U.S. Dist. LEXIS 50027, at *15-16. In view of the fact that
this dispute, to the extent it concerns unregistered copyrights, should not proceed,
evidence relating to the alleged infringement thereof is irrelevant and inadmissible.
Fed. R. Evid. 402. Accordingly, Defendants respectfully request that the Court
exclude such evidence. 5

4

As Defendants stated on opening, the list of unregistered works is merely
exemplary, and not intended to be exhaustive. (Mot. at 5 n.1.)
5
Defendants stand on the authority set forth in their Motion in response to any
other points Plaintiffs raise, especially regarding Plaintiffs’ burden to prove
compliance with the registration requirements a registration certificate that is
prima facie evidence of compliance or some other means. See St. Luke’s Cataract
and Laser Inst. v. Sanderson, 573 F.3d 1186, 1201 (11th Cir. 2009) (“[A]n owner
cannot bring a cause of action for copyright infringement until the owner has
complied with the copyright registration procedures . . . which include payment of
fees and deposit of copies of the work.”); Dream Custom Homes, 2011 U.S. Dist.
LEXIS 18268, at *25 (“An owner’s cause of action for copyright infringement is
unenforceable until compliance with the formalities of registration, including the
payment of fees and deposit of copies of the work, is shown.”).
6

CONCLUSION
For the foregoing reasons, and for the reasons set forth in Defendants’
opening motion, Defendants respectfully request that the Court grant their Motion.

Respectfully submitted, this 11th 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/ Stephen M. Schaetzel
Stephen M. Schaetzel
Georgia Bar No. 628653
John W. Harbin
Georgia Bar No. 324130
Mary Katherine Bates
Georgia Bar No. 384250
KING & SPALDING LLP
1180 Peachtree Street, N.E.
Atlanta, GA 30309
Telephone: [phone]

7

Facsimile: [phone]
Email: [e-mail]
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
Phone: [phone]
Fax: [phone]
[e-mail]
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

8

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 REPLY IN
SUPPORT OF DEFENDANTS’ MOTION IN LIMINE TO EXCLUDE
EVIDENCE

OF

ALLEGED

INFRINGEMENT

OF

IMPROPERLY-

ASSERTED COPYRIGHTS was prepared in a font and point selection approved
by this Court and authorized in Local Rule 5.1C.

/s/ Stephen M. Schaetzel
Stephen M. Schaetzel

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 11th day of May, 2011, I have
electronically filed the foregoing REPLY IN SUPPORT OF DEFENDANTS’
MOTION IN LIMINE TO EXCLUDE EVIDENCE OF ALLEGED
INFRINGEMENT OF IMPROPERLY-ASSERTED COPYRIGHTS with the
Clerk of the Court using the CM/ECF system, which will automatically send email 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/ Stephen M. Schaetzel
Stephen M. Schaetzel
Georgia Bar No. 628653
KING & SPALDING LLP
1180 Peachtree Street, N.E.
Atlanta, GA 30309
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]