Intellitech Corporation v. The Institute of Electrical and Electronics Engineers et al

Filing 75

ORDER denying 57 Defendant's Motion for Partial Summary Judgment; and denying 60 Plaintiff's Motion for Partial Summary Judgment. So Ordered by Judge Steven J. McAuliffe.(lat)

UNITED STATES DISTRICT COURT
DISTRICT OF NEW HAMPSHIRE

Intellitech Corporation,
Plaintiff
v.

Case No. 16-cv-0009-SM
Opinion No. 2018 DNH 109

The Institute of Electrical and
Electronics Engineers, Inc.
a/k/a IEEE,
Defendant
O R D E R
In this suit for copyright infringement, plaintiff,
Intellitech Corporation, alleges that defendant, The Institute
of Electrical and Electric Engineers (“IEEE”), infringed what it
claims to be its original, registered, work, entitled “Clause
for a Pipeline v. 20.”

Intellitech seeks injunctive relief,

statutory damages, attorneys’ fees, and costs.

Plaintiff moves

for summary judgment with respect to liability.

Defendant, for

its part, seeks partial summary judgment on plaintiff’s requests
for statutory damages, attorneys’ fees and injunctive relief.
For the reasons given below, both motions for summary judgment
are necessarily denied.

STANDARD OF REVIEW
When ruling on a motion for summary judgment, the court is
“obliged to review the record in the light most favorable to the
nonmoving party, and to draw all reasonable inferences in the

nonmoving party's favor.”

Block Island Fishing, Inc. v. Rogers,

844 F.3d 358, 360 (1st Cir. 2016) (citation omitted).

Summary

judgment is appropriate when the record reveals “no genuine
dispute as to any material fact and the movant is entitled to
judgment as a matter of law.”

Fed. R. Civ. P. 56(a).

In this context, a factual dispute “is ‘genuine’ if the
evidence of record permits a rational factfinder to resolve it
in favor of either party, and ‘material’ if its existence or
nonexistence has the potential to change the outcome of the
suit.”

Rando v. Leonard, 826 F.3d 553, 556 (1st Cir. 2016)

(citation omitted).

Consequently, “[a]s to issues on which the

party opposing summary judgment would bear the burden of proof
at trial, that party may not simply rely on the absence of
evidence but, rather, must point to definite and competent
evidence showing the existence of a genuine issue of material
fact.”

Perez v. Lorraine Enters., 769 F.3d 23, 29–30 (1st Cir.

2014).

In other words, if the nonmoving party's “evidence is

merely colorable, or is not significantly probative,” no genuine
dispute as to a material fact has been proved, and summary
judgment may be granted.

Anderson v. Liberty Lobby, Inc., 477

U.S. 242, 249-50 (1986) (citations omitted).

So, to defeat a properly supported motion for summary
judgment, the non-movant must support his or her factual claims
2

with evidence that conflicts with that proffered by the moving
party.

See generally Fed. R. Civ. P. 56(c).

It naturally

follows that while a reviewing court must take into account all
properly documented facts, it may ignore a party's bald
assertions, speculation, and unsupported conclusions.

See

Serapion v. Martinez, 119 F.3d 982, 987 (1st Cir. 1997).

See

also Scott v. Harris, 550 U.S. 372, 380 (2007) (“When opposing
parties tell two different stories, one of which is blatantly
contradicted by the record, so that no reasonable jury could
believe it, a court should not adopt that version of the facts
for purposes of ruling on a motion for summary judgment.”).

BACKGROUND
The IEEE is a not-for-profit corporation that, with the
involvement and assistance of employees and expert volunteers,
develops and publishes technical standards applicable in a wide
range of electrical and electronic endeavors.

Those standards

are typically developed by “working groups” comprised of
industry participants collaborating together.

Once finalized,

the standards are published by IEEE, and made available to IEEE
members, as well as members of the general public.

To develop general technical standards, working group
members participate in meetings, typically held weekly or
biweekly, draft and review position pieces, and create and
3

review presentations.

Bennett Declaration (Document No. 13-4) ¶

4; Clark Declaration (Document No. 23-1) at ¶ 4.

Meetings are

usually conducted telephonically or remotely via Webex or other
remote conferencing software.

Bennett Declaration at ¶ 4.

Each

working group has its own password protected website for use,
called a “grouper” site.

Id. at ¶ 6.

The grouper site acts as

a repository for the group’s working materials, including drafts
or other materials group members may want to review or consider.
Group members routinely upload drafts, proposed language, and
presentations to the grouper site for review and comment.
at ¶ 8.

Id.

Minutes from group meetings are also stored on the

grouper site.

Id. at ¶ 6.

IEEE’s copyright policy governing the standards development
process (the “Policy”) is fairly straightforward. 1

It requires

1

Intellitech argues that the IEEE-SA’s Policy is not
relevant here because “the actual copyright rules of the parent
corporation which is the Defendant in this case [IEEE, Inc.]” do
not reference implied licenses. Pl.’s Reply in Supp. of Mot.
for Summary Judgment at 8. Intellitech says that IEEE is
relying upon the rules of a “different, perhaps related, entity,
IEEE-SA,” and has not established that IEEE-SA’s rules are
applicable here. Id. Intellitech points to IEEE, Inc.’s
“Section 6 – Published Products and Services” policy, and
seemingly takes the position that Section 6 applies to the P1838
standards development process.
Intellitech’s argument is inconsistent with the position
taken by its CEO, Christopher J. Clark, in his September 2,
2014, letter to IEEE counsel, in which he relies upon Section
7.1 of the IEEE-SA bylaws in support of his position. See
Document No. 23-4, p. 2. Intellitech makes no effort to explain
4

that “[a]ll contributions to IEEE standards development . . .
meet the requirements outlined in this clause.”
13-5 (emphasis added).

Document No.

Two definitions in the Policy are

relevant to the parties’ dispute.

The first defines

“published,” as:
[M]aterial for which a claim of copyright is apparent
(e.g., the presence of the copyright symbol ©; an
explicit statement of copyright ownership or
intellectual property rights; stated permission to use
text; a text reference that indicates the insertion of
text excerpted from a copyrighted work; or a visual
indication of an excerpt from another work, such as
indented text).
Id.

The second term, “work product,” is defined as: “the

compilation of or collective work of all participants (e.g., a

why IEEE-SA’s policies were applicable to the mechanisms of the
P1838 working group as of September 2, 2014, but are now
inapplicable. Intellitech also seemingly relies upon IEEE-SA’s
bylaws and practices in its motion for summary judgment,
referencing the copyright policy in support of its position.
See Pl.’s Mem. in Supp. of Mot. for Summary Judgment at n.2.
Moreover, the evidence in the record does not support
Intellitech’s position. As defendant points out, Kathryn
Bennett, IEEE’s Senior Program Manager with administrative
oversight for the P1838 working group, explained in her
Declaration that IEEE-SA’s copyright policies applied to and
governed the work of the P1838 working group. See Bennett
Declaration at ¶ 8. And, the Policy itself clearly states: “All
contributions to IEEE standards development . . . shall meet the
requirements outlined in this clause.” Document No. 13-5. The
parties’ suit arose out of the IEEE standards development
process. Intellitech fails to point to any competent evidence
to the contrary.
For all those reasons, Intellitech’s argument is not
persuasive.
5

draft standard; the final approved standard; draft Industry
Connections white paper; Industry Connections web site).”

In relevant part, the Policy states:

Id.

7.2 Policy
The IEEE owns the copyright in all Work Products.
Participants are solely responsible for determining
whether disclosure of any contributions that they
submit to the IEEE requires the prior consent of other
parties and, if so, to obtain it.
7.2.1 Contributions from previously Published sources
All contributions from previous Published sources that
are not Public Domain shall be accompanied by a
Copyright Permission Form that is completed by the
copyright owner, or by a person with the authority or
right to grant copyright permission. The Copyright
Permission Form shall outline the specific material
being used and the planned context for its usage in
the Work Product.
7.2.2 Contributions not previously Published
For any contribution that has not been previously
Published, and that is not Public Domain:
a) The IEEE has the non-exclusive, irrevocable,
royalty-free, worldwide rights (i.e., a license) to
use the contribution in connection with the
development of the Work Product for which the
contribution was made.
…
Copyright ownership of the original contribution is
not transferred or assigned to the IEEE.
Id. (all emphasis in original).

6

The events giving rise to this dispute arose out of IEEE’s
efforts to develop a technical standard for “Test Access
Architecture for Three-Dimensional Stacked Integrated Circuits.”
The P1838 working group, tasked with the development of the
standard, was divided into three subgroups called “Tiger Teams.”
Each Tiger Team was assigned responsibility for various aspects
of the overall standard, and the teams worked separately on
concepts and proposed language for their assigned areas.
Breitfelder Declaration (Document No. 57-3) at ¶ 3.
Intellitech’s CEO, Christopher J. Clark, was a member of Tiger
Team 1.

Clark has a long history with IEEE, having volunteered

with the organization for over 24 years, chairing three
different working groups during that time.

The parties disagree about the role Clark played on Tiger
Team 1.

Clark argues that, while participating in the working

group, he developed Intellitech’s “position piece” on how serial
access and pipeline registers should be managed by a 3D standard
“[e]ntirely on his own,” and retained and exercised exclusive
control over the document he created.

Pl.’s Mem. in Supp. of

Mot. for Summary Judgment at 4; Clark Declaration (Document No.
60-2) at ¶¶ 13-16.

Clark says he distributed multiple versions

of the document to his team members, but always in uneditable
electronic form, bearing an Intellitech “watermark.”

7

Clark

Declaration (Document No. 23-1) at ¶ 7.

And, Clark says that,

as the working group discussed his document, he refined it,
presenting and explaining the rationale for Intellitech’s
position as it evolved.
¶ 7.

Clark Declaration (Docket No. 23-1) at

Clark contends he “named the Intellitech position piece,

in its final form, ‘Clause for a Pipeline v. 20’” (hereinafter,
the “Clause”).

Pl.’s Mem. in Supp. of Mot. for Summary Judgment

at 5.

The defendant, however, characterizes Clark’s role quite
differently — as the Tiger Team 1 “designated ‘scribe.’” 2
Mem. in Opp. to Summary Judgment at 4.

Def.’s

Defendant draws a

distinction between PowerPoint slide presentations Clark made to
the team (“position pieces”) and the team’s collaborative
development of the Clause, which, defendant says, “contained
language proposed and formatted for the purpose of comprising,
or being included in, the draft P1838 standard[,] and which
reflected the consensus of the team.”

Id. at 4-5.

Defendant

takes the position that Clark was developing, compiling, and
presenting language for the team to consider and eventually
incorporate into the draft standard.

2

The proposed Clause, as

Clark strenuously disagrees that he was a mere “scribe,”
but he seemingly misunderstands the term given the context in
which it was used. See Clark Declaration (Document No. 60-2),
¶ 17.
8

evolved, represented the “consensus and collective judgment of
the team as to how to express the ideas they were jointly
developing.”

Id. at 12.

In any event, on April 10, 2014, Clark circulated an early
version of the Clause to the Tiger Team.

He wrote: “[h]ere is

the foundational clause needed to describe pipeline bits.

I

have come up with ‘short names’ for the paths that everyone had
selected last week.

I use those path names to create a set of

rules and recommendations.”

Document No. 57-2, at p. 1.

Prior to the Tiger Team meeting on May 8, 2014, Clark
circulated another version of the Clause, writing: “I’m
attaching a proposed clause, subject to [working group] changes,
on the pipeline register.”

Document No. 57-2, at p. 6.

And, at

the Tiger Team meeting on May 8, 2014, Clark told the team that
he had “developed a clause for the pipeline.”
6, at p. 16.

Document No. 13-

In the context of the team’s discussion of the

document, team member Eric Jan Marinissen commented, “It looks
like it’s in the IEEE template.”

Id., at p. 17.

responded, “It’s exactly that. . .
to the standard.”

Clark

Written to be able to get in

Id.

On May 13, 2014, Clark circulated yet another version of
the Clause prior to the team’s next meeting.

9

Document No. 66-6,

at p. 1.

He wrote: “Here is the latest document which hopefully

reflects the position of the majority of TT1 members.”

Id.

The

team continued to discuss the latest version of the Clause at
the next meeting (May 15, 2014).
p. 19.

See Document No. 13-6, at

That process continued over the next several months,

with Clark circulating evolving versions of the Clause to the
team, and the team discussing the document at their meetings.
See, e.g., Document No. 57-2, at p. 12 (Clark circulating
version reflecting revisions “as discussed,” and requesting that
team members “tweak it and make it ready for a vote as a whole
clause in the coming weeks”); Document No. 13-6, at p. 20-28
(May 29, 2014, and June 5, 2014, team meeting minutes); Document
No. 57-2, at p. 20 (June 12, 2014, email from Clark, circulating
“most recent version” of Clause); Document No. 13-6, at p. 29
(June 12, 2014, team meeting minutes, including agenda item:
“Review CJ’s clause-for-pipeline-v7.pdf”).

At a Tiger Team 1 meeting held on July 10, 2014, Marinissen
raised concerns about the Intellitech watermark Clark had
included on all versions of the Clause he presented and
circulated.

Document No. 13-6, p. 33.

Marinissen asked Clark

to either remove the watermark, or change the mark to P1838.
Clark noted that, until the team “vote[d] on something for P1838
and [made] it part of the standard, he consider[ed] [the Clause]

10

Intellitech’s[, and] would rather keep the Intellitech
watermark.”

Id.

The discussion continued:

[Clark] doesn’t want people to copy it and call it
their own. It was then pointed out that this is a
group effort and some of the ideas in the slides are
from others in the working groups. . . . [S]ome of
the information that gets added to this document is
from the working group discussion and it is not
appropriate to have the [I]ntellitech watermark.
[Clark] said he would like to continue the way he is
doing it at the moment.
Document No. 13-6, p. 33.

Clark responded further to Marinissen’s concerns regarding
Intellitech’s watermark in an email dated July 17, 2014.
Document No. 23-4, p. 123.

Clark wrote:

I went back and reviewed v1 to v14 [of the Clause,]
and I could not identify a figure or text which could
stand-alone be copyrightable to another [working
group] member, hence I could not see whether joint
authorship existed. The words and figures, I
authored, even if it was in response to me asking
questions as to ‘what is it you want?’ to [working
group] members. . . . I am not the editor nor am I
creating or working with the P1838 draft which is
copyright IEEE. You can see a distinct difference
between what I supply to the P1149.10 [working group]
which is the P1149.10 draft with a copyright
attributed to the IEEE[,] and the attached document
which is in ‘Clause’ form with rules, recommendations.
Figures in P1149 which are authored by Intellitech
were donated to the [working group] to use in the
draft. That is the correct terminology[:] “donated.”
…
I would say the discussion is ‘much ado about nothing’
as I had already said I would donate the material to
the IEEE should we accept this inclusion with the
draft. All in all we should be creating an air of
encouragement and thanks when members are contributing

11

numerous hours to creation of content for the
standard. It’s an entirely different effort than
attending meetings.
Document No. 23-4, p. 123.

In that same email, Clark wrote that

he had not made any changes to the current version of the Clause
“since last week,” and, “[f]or homework due next week,” the team
should “review the clause lines 1-121 and send feedback to the
group of suggested changes, otherwise I would entertain a motion
next week to accept the clause as written.”

Id.

On July 24, 2014, Clark circulated version 16 of the
Clause.

He wrote: “This is the proposed clause for pipeline and

registration cells.

Version 16 captures the changes . . . from

our last meeting. . . .
up in a week or two.

I suspect that we are close to wrapping

The proposal captures all the input

supplied from various members (i.e.[,] we worked towards
minority inclusion rather than minority exclusion.”

Document

No. 57-2, p. 28.

The team continued to meet, and, at its July 31, 2014,
meeting, seemed close to finalizing the document for insertion
into the main draft standard.

Document No. 66-10, pp. 1-2.

Clark noted at the start of the meeting that he had circulated a
version of the Clause the night prior (version 17), and the team
reviewed that version together.

Clark discussed changes he made

12

to the document based on team member’s comments, and solicited
feedback on revisions.

Id., p. 1.

Clark then asked the team:

If we were to put [the Clause] up for a vote [to
present to the main P1838 group,] what would be the
additional changes we’d like to see that would convert
a no vote to a yes vote . . . I would prefer to have a
unanimous vote and then bring it to the main group. .
. . This is a major milestone. This would be the
first main clause to be inserted in to the main draft
and I want it to be unanimous. According to IEEE[,]
you should incorporate comments from the minority.
Id., p. 2.

On August 7, 2014, Clark emailed the Clause, version 20, to
team members, “with changes from today.”
p. 2.

Document No. 62-2,

He wrote: “Group wanted to remove ambiguity with using

hex and decimal for capture and reset values such that each
value is explicitly defined (no ambiguous padding).

Other

feedback on recommendation and grammar was incorporated in the
meeting.”

Id.

Clark asked team members to review and provide

feedback prior to the next team meeting.

On August 14, 2014,

Marinissen emailed Clark, requesting a Microsoft Word version of
the Clause so he could make his “suggested edits directly” in
the document with “Track Changes.”

Document No. 23-4, p. 126.

After Clark provided Marinissen with a Word version, Marinissen
emailed the team the Clause with his proposed revisions,
including replacement of the Intellitech watermark with a P1838
watermark.

See Document No. 23-4, p. 128.

13

According to Clark, he “objected immediately to . . .
Marinissen’s pirating of [his] work and . . . halted [Tiger Team
1] meetings until we could resolve the issue.”
Declaration (Document No. 23-1) at ¶ 10.

Clark

Then, on September, 2,

2014, Clark wrote to Eileen Lach, IEEE’s General Counsel and
Chief Compliance Officer, articulating the position that
Intellitech was the author and copyright owner of the Clause,
and complaining that Marinissen “conducted willful infringement;
he was advised who the copyright holder was, had an opportunity
not to infringe, sought out the original document under false
pretenses and claimed the copyrighted work for his own working
group’s use.”

Document No. 23-4, pp. 2-3.

Clark requested that

IEEE order Marinissen to issue a written apology to Intellitech,
and to promise “not to misappropriate any participant’s
material.”

Id., p. 3.

The team attempted to resume meeting on September 11, 2014,
but Kathryn Bennett, IEEE’s Senior Program Manager with
administrative oversight for the P1838 working group, emailed
team members that meetings would cease until the copyright issue
was resolved by IEEE.

Document No. 14-12, at p. 1.

Intellitech

and IEEE engaged in additional correspondence, with Intellitech
sending IEEE a “take-down notice,” or a cease and desist letter
“asserting [Intellitech’s] copyright ownership and IEEE’s

14

infringement.” 3

Clark Declaration, Document No. 23-1, at ¶ 12;

see also Document No. 60-13, p. 2 (October 10, 2014 email from
Clark stating, “Please be advised that [IEEE] was sent a takedown notice previously with today, 10/10/2014 as the expiration.
Should no action be taken[,] we will be forced to assume that
the IEEE will not comply.”).

On October 10, 2014, IEEE

responded:
While IEEE strongly disagrees with your assertions of
impropriety and copyright infringement, of which IEEE
believes none to have occurred, as a sign of good
faith, and with respect to all rights and contentions
of IEEE, pending resolution of our investigation of
the matter, please be advised that we have removed the
files you identified from our servers.
Document No. 60-13, p. 2.

By letter dated November 17, 2014,

IEEE further stated: “there is no present plan to incorporate
Clause for Pipeline v20 into the IEEE Std 1838 standard and any
precursory drafts thereof.”

3

Document No. 14-5, p. 3.

Clark

In recent court filings, Clark takes the position:
[T]he copyright issues being discussed by me with
P1838 members involved [an] issue of copyright
ownership, not copyright infringement. I simply was
educating Marinissen and making the required ownership
statement. I did, and do certainly still today,
consider Mr. Marinissen’s conduct in creation of a
derivative work on or after August 14, 2014[,] to have
been improper, as well as directly contrary to IEEE
ethics rules.

Clark Declaration (Document No. 62-1), at ¶ 4. He further
states: “I never asserted that the IEEE infringed on any of
Intellitech’s copyright rights.” Id.

15

“verified personally that . . . all copies of [plaintiff’s work]
were removed from the IEEE servers,” and “Intellitech was
satisfied with IEEE’s response.”

Clark Declaration (Document

No. 23-1) at ¶ 12.

On October 23, 2014, “Clause for a Pipeline v. 20” was
registered with the United States Copyright Office Registration
No. TXu 1-911-804.

And, evidence in the record suggests that

Tiger Team 1 was ultimately disbanded in late 2014. 4

See Bennett

Declaration (Document No. 13-4) at ¶ 20.

In October, 2015, Marinissen filed an extension request
with IEEE for P1838.

See Document No. 14-9.

In an effort to

explain why an extension was necessary, Marinissen wrote:
The copyright issue that was encountered in [Tiger
Team] 1 was rather specific. The chair of [Tiger
Team] 1 claimed copyright to a section of the draft
standard that was developed within the subgroup.
IEEE-SA does not agree with that copyright claim,
which led to a conflict with the chair of [Tiger Team]
1. The Working Group disband[ed] [Tiger Team] 1 and
suspended activities on this topic for one year. The
Working Group is in the process of starting up a
[Tiger Team] 4 with the same technical charter as
[Tiger Team] 1 had. [Tiger Team] 4 will produce a
fresh write-up of the various standard clauses,

4

The evidence in the record is somewhat unclear on that
point, as certain documents suggest that the team continued to
meet at least through February, 2015. See, e.g., Document No.
14-13 (emails between, inter alia, Marinissen and Clark
regarding February, 2015, meeting minutes and copyright
licenses).

16

thereby avoiding further copyright claims from the
same person.
Id., p. 4.

The extension was seemingly approved, and Tiger Team 4
commenced meeting.

However, at the first Tiger Team 4 meeting,

the team’s chair, Adam Cron, presented a five-page document
containing language from the Clause, asserting its copyright by
IEEE.

Cron circulated versions of the document, entitled “IEEE

P1838/D1.01,” to Tiger Team 4 members as meetings progressed
from December, 2015, through March, 2016, creating, according to
Intellitech, seven purported derivatives of the Clause.

As of June, 2016, however, Tiger Team 4 had adopted a
“placeholder draft” of language proposed for inclusion in the
P1838 standard, which was drafted “specifically to avoid any
actual or apparent overlap in language with the ‘Clause.’”
Breitfelder Declaration (Document No. 57-3) at ¶ 5.

Team 4

continued to amend and update the placeholder, which was
ultimately incorporated into the draft P1838 standard.
¶¶ 6-8.

Id. at

Neither the “placeholder draft” nor the current draft

of the P1838 standard contains any language from the Clause.
Id. at ¶ 11.

IEEE has stated that the “P1838 Working Group has

no intention of using any language from the Clause . . . in any

17

further iterations of the proposed draft standard or in the
final standard itself.”

Id. at ¶ 12.

DISCUSSION
I.

Intellitech’s Motion for Partial Summary Judgment
(On Liability Only)
Intellitech asserts that there are no genuine issues of

material fact regarding its copyright infringement claim, and,
as it has demonstrated both its valid ownership of the copyright
for “Clause for a Pipeline v. 20,” and that defendant “copied,
used and modified” its “Clause for a Pipeline v. 20” when it
created seven purported derivatives of the Clause in December,
2015, through March, 2016, it is entitled to summary judgment on
its infringement claim.

Pl.’s Mem. in Supp. of Mot. for Summary

Judgment at 11.

Defendant offers two responses.

First, defendant contends

that, to the extent Intellitech does own the copyright in the
Clause, 5 IEEE had (and has) a non-exclusive, irrevocable and
perpetual license to use the Clause in connection with the P1838

5

There is evidence in this record sufficient to contradict
Intellitech’s factual claim of copyright ownership, and perhaps
to establish a potential joint ownership in the work. See 1
Nimmer on Copyright § 6.03 (citations omitted); see generally
Herbert, M. D., J. D. v. United States, 36 Fed. Cl. 299 (1996).
Again, material issues of fact preclude summary judgment in
favor of Intellitech.

18

working group’s efforts to develop a new technical standard.
Second, defendant argues that its use of the Clause was
protected by copyright law, because the Clause was used only to
give new expression to the working group’s ideas, and the final
version of the P1838 standard will not contain language from the
Clause.

A.

Implied License

“To establish copyright infringement under the Copyright
Act, ‘two elements must be proven: (1) ownership of a valid
copyright; and (2) copying of constituent elements of the work
that are original.’”

Johnson v. Gordon, 409 F.3d 12, 17 (1st

Cir. 2005) (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co.,
499 U.S. 340, 361 (1991)).
proof as to both elements.”

“The plaintiff bears the burden of
Id. (citations omitted).

However,

where a copyright owner grants a nonexclusive license to another
party, “[u]ses of the copyrighted work that stay within the
scope of a nonexclusive license are immunized from infringement
suits.”

John G. Danielson, Inc. v. Winchester-Conant Props.,

Inc., 322 F.3d 26, 40 (1st Cir. 2003) (citing Graham v. James,
144 F.3d 229, 236 (2d Cir. 1998).

While transfers of copyright typically “must be made in
writing, 17 U.S.C. § 204(a),” that “requirement does not apply
to nonexclusive licenses where ownership of the copyright is not
19

transferred, see id. at § 101.”
F.3d at 40.

John G. Danielson, Inc., 322

“A copyright owner may grant such nonexclusive

licenses orally, or they may be implied from conduct which
indicates the owner's intent to allow a licensee to use the
work.”

Id. (citations omitted).

“[I]mplied licenses are found

only in narrow circumstances,” and the burden of proving the
existence of the license falls on the purported licensee, the
party claiming its protection.

Estate of Hevia v. Portrio

Corp., 602 F.3d 34, 41 (1st Cir. 2010).

Our court of appeals has instructed that “[t]he touchstone
for finding an implied license ... is intent.”
602 F.3d at 41.

Estate of Hevia,

Therefore, the court should “ask whether ‘the

totality of the parties' conduct indicates an intent to grant
such permission.’”

Id. (quoting 3 Melville B. Nimmer & David

Nimmer, Nimmer on Copyright § 10.03[A][7], at 10–42 (2000)).
“The test most commonly used in determining if an implied
license exists with respect to most kinds of works asks whether
the licensee requested the work, whether the creator made and
delivered that work, and whether the creator intended that the
licensee would copy and make use of the work.”

Estate of Hevia,

602 F.3d at 41.

IEEE argues that the totality of the parties’ conduct
compels the conclusion that — to the extent Intellitech does own
20

an exclusive copyright in the Clause — Intellitech granted IEEE
a nonexclusive license to use the language of the Clause for the
purpose of developing and drafting a P1838 standard.

Plaintiff,

on the other hand, contends that IEEE has not sufficiently
proved conduct that would support “either an express or impliedin-law license at any time.”
Summary Judgment at 8.

Pl.’s Reply in Supp. of Mot. for

Construing the evidence in the light

most favorable to the defendant, and drawing all reasonable
inferences in its favor, as the court must on a motion for
summary judgment, a reasonable factfinder could easily conclude
that under these circumstances the course of conduct between the
parties necessarily gave rise to an implied license.

While

“intent” is more often a question of fact, some circumstances
might admit no other rational conclusion then that an intent to
convey a license was fully understood by all.

The three-part inquiry — whether the licensee requested the
work, whether the creator made and delivered that work, and
whether the creator intended that the licensee would make use of
the work — while not a perfect fit here — still seems to support
rather than belie such a conclusion.

IEEE “requested” the P1838 working group, of which Clark
was a member, develop a P1838 standard.

The group was an

assembly of experts in the pertinent field, all volunteering
21

their time and expertise in a collaborative effort to develop
generally accepted technical standards to benefit the field and
those who are involved in it.

Clark, consistently with his

voluntary commitment to work on the standard, drafted and, as
expected, contributed his expertise in developing and presenting
the Clause for discussion and further collaborative development
by the working group.

The relationship between the parties also could well be
found to support the conclusion that Intellitech intended to,
and understood that it was granting a nonexclusive and
irrevocable license to IEEE.

On that point, Estate of Hevia,

602 F.3d at 42, while not exactly on all fours, is instructive.
Hevia involved two business partners who jointly participated in
several real estate ventures.

Id. at 38.

One partner ran the

business side of the enterprise, while the other took charge of
design, devising architectural concepts, and creating plans used
for the partners’ development activities.

Id.

The parties’

dispute arose out a planned residential community owned by one
of the venture’s companies (RG Development), for which the
designer developed architectural plans (the “Hevia plans”).

The

designer died, however, before development of the community
commenced.

Following his death, heirs sold his shares and

interest to his partner.

The surviving partner became the sole

22

shareholder in all companies owned by the venture, including RG
Development.

RG Development sold the land earmarked for the

residential community to another entity, and granted that entity
permission to use the Hevia plans in their development.

The

designer’s heirs objected, asserting ownership of the Hevia
plans.

The court of appeals summarized the evidence that the
designer had granted RG Development an implied nonexclusive
license to use the plans to develop the residential community as
“compelling.”

Id. at 41.

The court stated:

The evidence makes it pellucid that the relationship
among [the parties] had a single overarching goal: the
development of Río Grande Village. RG Development was
owned one-half by RHA and one-half by FV. Thus, both
men stood to gain from the seamless completion and
eventual success of the project. To this end, each
man made a valuable contribution: RHA contributed his
architectural talents (which yielded the copyrighted
work) and FV contributed his financial and managerial
expertise (which made the numbers work).
RHA's intentions about the granting of a license must
be viewed against this entrepreneurial backdrop.
Because the very essence of RHA's ongoing relationship
with FV and RG Development was founded on the
successful consummation of the project (which
necessitated RG Development's use of the Hevia Plans),
that relationship weighs in favor of finding an intent
on RHA's part to grant a license to RG Development.
Id. at 42.

The court continued:

RHA's overall course of conduct speaks directly and
unequivocally to his intent that the Hevia Plans be
used to develop Río Grande Village. He created the
plans for that very purpose; and, as far back as 2000,

23

gave permission to an engineer . . . to incorporate
them into [his] more elaborate blueprints for the
project. The inference is inescapable that RHA
expected all along that [the engineer’s] work product
would serve as the basis for obtaining the permits
needed to move forward with the proposed development.
Id.
In this case, Clark, an IEEE volunteer, 6 was not compelled
to participate in the P1838 working group; he chose to do so,
fully understanding the nature of the collaborative effort aimed
at developing an IEEE technical standard, and certainly must be
charged with knowledge of IEEE’s policies, practices, and
procedures.

As in Hevia, the working group had one “single

overarching goal:” development of the IEEE P1838 standard.
at 42.

Id.

Indeed, “the very essence” of Clark’s relationship with

IEEE “was founded on the successful consummation of the
project.”

Id.

And, given Clark’s extensive experience as an

IEEE volunteer, Clark was surely aware that language used in
IEEE’s standards necessarily originates with its volunteers’

6

Intellitech claims that it, and not Clark, is the owner of
the work, and, therefore, defendant must prove conduct by
Intellitech (not Clark) that supports an implied license.
An implied license is like an implied contract. I.A.E.,
Inc. v. Shaver, 74 F.3d 768, 776 (7th Cir. 1996). And,
generally, “a president of a corporation is the head of the
corporation subject to the control of the board of directors as
to matters out of the ordinary, but with power to bind the
corporation in regard to contracts involved in the everyday
business of the corporation.” Holman-O. D. Baker Co. v. PreDesign, 104 N.H. 116, 118 (1962) (citations omitted).
24

drafting contributions.

Finally, as in Hevia, where the court

noted that the plans at issue were specifically created by the
architect “to develop Rio Grande Village,” Clark not only knew,
but explicitly acknowledged that his efforts were intended as
part of the creation of the P1838 standard.

See Document No.

13-6, p. 17 (Marinissen: “Excuse me CJ what is this document
you’re showing?

It looks like it’s in the IEEE template” . . .

Clark: “It’s exactly that . . . Written to be able to get in to
the standard.”) (emphasis added).

Clark, a long-standing volunteer with IEEE, was presumably
familiar with its policies, including its copyright policies.
Clark chose to (repeatedly) participate in the IEEE’s standards
development process.

Accordingly, a reasonable factfinder could

well infer that Clark agreed to the terms of the Policy
governing contributions to IEEE standards development, and
willingly agreed to abide by its terms.

Whether Clark (if he

had an exclusive copyright in any draft version) granted IEEE an
implied license to use the Clause “in connection with the
development of” the P1838 standard, is, on this record a
question that appears to require factual findings to resolve —
and is by no means clear as a matter of law.

Defendant has not moved for summary judgment on liability,
so the record is probably not fully developed with respect to
25

that issue.

But the current factual record is plainly

insufficient to support summary judgment on liability in favor
of Intellitech, and, if anything, probably leans against it.
Material facts relevant to “intent,” and whether an implied
irrevocable non-exclusive license to use Clark’s drafting work
is held by IEEE (rendering the infringement claims meritless),
are in dispute and, absent additional development clarification,
require a trial.

Intellitech has simply not shown that it is

entitled to judgment as a matter of law on this factual record.
Accordingly, its motion is necessarily DENIED.

II.

IEEE’s Motion for Summary Judgment (On Claims for Statutory
Damages, Attorneys’ Fees and Injunctive Relief)
IEEE moves for summary judgment on Intellitech’s claims for

statutory damages and attorneys’ fees, which, IEEE argues, are
precluded by 17 U.S.C. § 412.

IEEE further argues that the

court should grant summary judgment against Intellitech’s claims
for injunctive relief on mootness grounds.

Disputed material

facts preclude the entry of summary judgment on both grounds.

A.

17 U.S.C. § 412

Pursuant to Section 504, a copyright owner may elect to
recover, in lieu of actual damages and profits, an award of
statutory damages for all infringements involved in the action.

26

17 U.S.C. § 504.

Statutory damages and attorneys’ fees, however

are not available for:
(1)

any infringement of a copyright in an unpublished
work commenced before the effective date of its
registration; or

(2)

any infringement of copyright commenced after
first publication of the work and before the
effective date of its registration, unless such
registration is made within three months after
the first publication of the work.

17 U.S.C. § 412.

In support of its motion, IEEE argues that plaintiff’s
damages claim falls into the first category because any
purported infringement began, if at all, before Intellitech’s
registration of the Clause.

IEEE argues that Intellitech first

claimed infringement of its copyright in August of 2014.
Clause was not registered until October of 2014.

The

And, IEEE

further contends, the Clause was “unpublished” prior to its
registration in October of 2014.

With respect to post-

registration infringement, occurring between December, 2015, and
March, 2016, IEEE argues that any purported infringement
occurring during that time period was merely a continuation of
the August, 2014, infringement, as there is no difference
between Intellitech’s allegations of pre- and post-registration
infringement activity.

27

Finally, IEEE argues that, even if the Clause could be
considered “published,” Intellitech cannot recover statutory
damages or attorneys’ fees under the statute’s second category.
That is because Intellitech failed to register the Clause within
three months of its first publication, on April 10, 2014 (when
the Clause was first distributed to members of the Tiger Team on
the shared P1838 website).

(1)

Affirmative Defense

Before reaching the merits of the defendant’s motion,
Intellitech’s contention that 17 U.S.C. § 412 creates an
affirmative defense, which defendant waived by failing to
properly and timely plead, ought to be addressed.

Intellitech

likens 17 U.S.C. § 412 to a statutory bar (or cap) on damages,
citing Jakobsen v. Mass. Port Authority, 520 F.2d 810, 813 (1st
Cir. 1975), in which our court of appeals held that a statutory
limitation on the Port Authority’s liability should have been
asserted as an affirmative defense.

Whether 17 U.S.C. § 412 is analogous to a “damages cap,”
and so should be treated as an affirmative defense, is not
settled in the relevant case law.

There are a few cases from

the Central and Northern Districts of California that seem to
support that view.

See, e.g., Malem Med., Ltd. v. Theos Med.

Sys., No. C-13-5236 EMC, 2014 WL 3568885, at *3 (N.D. Cal. July
28

18, 2014); Peliculas y Videos Internacionales, S.A. de C.V. v.
Harriscope of L.A., Inc., 302 F. Supp. 2d 1131, 1138 (C.D. Cal.
2004).

But, other courts put the burden of proving satisfaction

of Section 412’s requirements squarely on the plaintiff.

See,

e.g., Sullivan v. Flora, Inc., No. 15-CV-298-WMC, 2017 WL
3575630, at *2 (W.D. Wis. May 16, 2017) (“Plaintiff argues that
a challenge to statutory damages based on the timing of the
registration vis-à-vis the commencement of infringement had to
be pleaded as an affirmative defense. . . .

Given the lack of

support for this position from any other court, and in light of
the Seventh Circuit's limited treatment of statutory damages,
plaintiff appears to have the burden of proving that she
satisfies § 412's timing requirement before being entitled to
statutory damages.”) (internal citations omitted).

For purposes of resolving this motion, the issue need not
be resolved.

Assuming arguendo that plaintiff is correct, and

defendant was required to raise 17 U.S.C. § 412 as an
affirmative defense, the defendant has adequately and timely
done so, in a manner sufficient to provide plaintiff with fair
notice of the issue.

See InvestmentSignals, LLC v. Irrisoft,

Inc., No. 10-CV-600-SM, 2011 WL 3320525, at *2 (D.N.H. Aug. 1,
2011) (an affirmative defense “must merely provide fair notice
of the issue involved.”); see also Lexington Luminance LLC v.

29

TCL Multimedia Tech. Holdings, Ltd., No. 16-CV-11458-DJC, 2017
WL 3795769, at *7 (D. Mass. Aug. 30, 2017)

(“[T]he Court

declines, at this stage, to strike affirmative defenses that are
more than adequate to give [plaintiff] fair notice of
Defendants' defenses.”).

IEEE pled in its Answer as an

affirmative defense: “Intellitech has failed to state a claim
for statutory damages or attorneys’ fees.”

Ans. at ¶ 34.

That

is more than adequate to provide plaintiff with fair notice,
especially given that defendant also filed a motion pursuant to
Fed R. Civ. P. 12(b) to dismiss, arguing that Section 412 barred
Intellitech’s statutory damages claims.

(2)

Continuing Conduct

Section 412 of the Copyright Act was designed to “implement
two fundamental purposes:” to provide copyright owners with an
incentive to promptly register their copyrights; and to
encourage potential infringers to check the Copyright Office
database.

Derek Andrew, Inc. v. Poof Apparel Corp., 528 F.3d

696, 900 (9th Cir. 2008).

Consistent with that purpose, Section

412 prohibits recovery of statutory damages and attorneys’ fees
for alleged infringement: (1) of an unpublished work that
commences before the effective date of the copyright
registration; or (2) of a published work that occurred after
publication but before registration, unless registration is made

30

within three months of first publication.

See Latin Am. Music

Co. v. Am. Soc'y Of Composers (ASCAP), 642 F.3d 87, 90 (1st Cir.
2011) (“Section 412 bars recovery of statutory damages under
section 504 and attorneys' fees under section 505 by copyright
owners who failed to register the work before the alleged
infringement began.”) (citing 17 U.S.C. § 412(2)) (additional
citations omitted).

Therefore, whether plaintiff is entitled to

statutory damages depends on whether defendant’s purported
infringement began prior to plaintiff’s registration of the
Clause in October, 2014.
“Every court to consider the issue has held that
‘infringement “commences” for the purposes of § 412 when the
first act in a series of acts constituting continuing
infringement occurs.’”

Derek Andrew, 528 F.3d 696, 700–01 (9th

Cir. 2008) (quoting Johnson v. Jones, 149 F.3d 494, 506 (6th
Cir. 1998)) (additional citations omitted); see also Amador v.
McDonald's Corp., 601 F. Supp. 2d 403, 410 (D.P.R. 2009) (“for
purposes of Section 412(2), a continued infringement commences
when the first act in a series of ongoing infringements of the
same kind occurs.”) (citations omitted).

So, “a plaintiff may

not recover an award of statutory damages and attorney’s fees
for infringements that commenced after registration if the same
defendant commenced an infringement of the same work prior to

31

registration.”

Mason v. Montgomery Data, Inc., 967 F.2d 135,

144 (5th Cir. 1992).
Intellitech, recognizing the issue, argues that no
infringement occurred prior to the work’s registration, and in
support of that position, makes two arguments.
easily dispatched.

The first is

Plaintiff takes the position that because it

has not alleged in this litigation that IEEE infringed its work
prior to its October, 2014, registration, timing is not a
problem.

That argument is a non-starter for several reasons,

including that plaintiff’s position is actually contradicted by
the affirmative allegations in its Complaint; it is inconsistent
with its position earlier in this litigation; and, it is
contradicted by the record evidence.

See, e.g., Compl. ¶¶ 22,

25 (alleging, inter alia, that counsel for IEEE represented to
plaintiff that all copies of plaintiff’s work would be removed
from its servers “in response to Plaintiff’s letters asserting
its copyright ownership and IEEE’s infringement” in October,
2014”); Clark Declaration (Document No. 23-1) at ¶ 12 (“In
October 2014, in response to Plaintiff’s prior cease and desist
letter asserting its copyright ownership and IEEE’s
infringement, counsel for IEEE expressly represented to
Plaintiff that all copies of Plaintiff’s Work would be removed
from its servers . . . I believe that Defendants discontinued

32

for a significant period of time all activities in Tiger Team 1,
including infringing activities, with regard to the Work.”
(emphasis added); Document No. 23-4, p. 3 (September 2, 2014,
letter to Lach from Clark, writing: “Mr. Marinissen conducted
willful infringement.”); Document No. 23-4, p. 144 (October 2,
2014, letter to Lach from Clark, writing: “It has come to my
attention that the IEEE is hosting on its servers . . . two
documents, “Modified version of Pipeline clause V20” and “Erik
Jan’s review comments on Pipeline clause V20” that contain
Intellitech Corporation copyrighted material. . . .

Intellitech

is the author of the material contained within these documents
and the IEEE’s use is not authorized and is infringing
Intellitech’s copyright.”) (emphasis added).
But, notwithstanding plaintiff’s self-contradictory
position, the record makes clear that IEEE’s 2015-2016 conduct
about which plaintiff complains (“creating, publishing and
displaying a series of infringing derivative works”) is
substantially similar to IEEE’s 2014 conduct, which plaintiff
now attempts to characterize as merely a “dispute between Mr.
Clark and Erik Jan Marinissen.”
to Summary Judgment at 5-6. 7

See Pl.’s Mem. in Supp. of Obj.

In both situations, a member of the

7

Plaintiff’s efforts to distinguish between actions taken by
Marinissen and actions taken by IEEE are similarly unavailing.
That is because, first, as defendant points out, plaintiff’s
33

P1838 working group created and distributed a purported
derivative of the Clause to the team.

So, to the extent

plaintiff alleges that IEEE’s conduct in December, 2015, through
March, 2016, constituted infringement, that conduct similarly
would constitute infringement in August, 2014, well before
registration of the work in October, 2014.
That, however, brings the court to Intellitech’s suggestion
that a material issue of disputed fact exists as to whether
IEEE’s conduct prior to copyright registration constitutes
infringement.

It argues:

On this record, a reasonable fact-finder could find
that Defendant IEEE did nothing in 2014 beyond that
which it impliedly was authorized by Plaintiff
Intellitech to do, but that beginning on November 20,
2015[,] IEEE commenced infringing “Plaintiff’s
Copyrighted Work.” (citing Clark Declaration (Document
No. 62-1) at ¶¶ 4-5; Def.’s Ans. ¶ 37 (asserting
affirmative defense of license).) While it is true
that the IEEE’s explicit promise conveyed to
Intellitech on November 17, 2014[,] eliminated any
possible further reliance on the doctrine of license,
complaint does not distinguish between defendants, but rather
states a single copyright claim against all. And second, the
role played by IEEE with respect to the purported infringement
in 2014, and in 2015-2016 was functionally the same.
While plaintiff points out that IEEE has denied explicitly
authorizing Marinissen’s creation of the derivative in 2014,
that fact is of limited relevance. At issue in the suit is
whether the conduct at issue constituted infringement for which
IEEE is liable, not whether IEEE explicitly authorized that
conduct (and, the court notes, plaintiff does not contend that
IEEE explicitly authorized the 2015-2016 creation of subsequent
derivatives).

34

(and therefore IEEE cannot reasonably claim that it
was somehow immunized for the ongoing infringement
which it committed commencing on November 30, 2015), a
reasonable factfinder could find that IEEE’s conduct
in 2014 was not wrongful. Indeed, it is difficult to
see how a reasonable fact-finder could help but find
otherwise (non-infringement in 2014 and infringement
commencing November 30, 2015).
Pl.’s Mem. in Supp. of Obj. to Summary Judgment at 19.

Defendant says its motion is premised, and should be
resolved, on the basis of Intellitech’s allegation of
infringement, and any other facts that Intellitech musters to
show that Section 412 is satisfied.

Courts can and do grant

judgment on claims for statutory damages prior to a definitive
finding of copyright infringement.

See, e.g., IvyMedia Corp. v.

iLIKEBUS, Inc., 252 F. Supp. 3d 34, 41 (D. Mass. 2017) (“because
the undisputed facts show that the 2015 copyright was registered
after the alleged infringement began, defendants are entitled to
summary judgment on plaintiff's claim for statutory damages and
attorneys' fees as a matter of law.) (emphasis added); see also
Dickert v. N. Coast Family Health, Inc., No. 14-CV-316-JL, 2015
WL 3988676, at *4 (D.N.H. June 10, 2015) (granting defendant’s
motion to dismiss plaintiff’s claims for statutory damages,
because plaintiff failed to “register the website until well
after the alleged infringement began, and cannot recover
statutory damages.”) (emphasis added); Archer v. Methot, No.
CIV. 09-CV-85-JD, 2009 WL 2929298, at *2 (D.N.H. Sept. 9, 2009)

35

(ruling, on a motion for judgment on the pleadings, where
plaintiff alleged nine instances of infringement occurring prior
to copyright registration, “she cannot avoid judgment on the
pleadings as to her claim for statutory damages.”); but see
Aardwolf Indus., LLC v. Abaco Machines USA, Inc., No. CV 161968-GW(JEMX), 2016 WL 9275401, at *6 (C.D. Cal. Nov. 21, 2016)
(denying defendant’s motion for judgment on plaintiff’s
entitlement to statutory damages where defendant failed to
provide evidence of “actual copyright infringement,” because
“[u]nder the plain meaning of the statute, an award of statutory
damages or attorney's fees — and therefore a restriction on such
awards under 17 U.S.C. § 412 — is predicated upon a finding of
actual infringement prior to registration, not merely
allegations of infringement.”)

In this case, however, the date of IEEE’s first alleged
infringement is plainly disputed, may turn on whether an implied
license was given, and whether it was irrevocable.

And,

obviously, when infringement, if any, began, is material to
determining the availability of statutory damages.

As this

court has previously determined, defendant has identified
disputed material issues of fact related to its having acquired
an implied license to use the work.

Whether that license was

revocable also turns on disputed facts.

36

And, as noted earlier,

IEEE may very well have a joint copyright in the drafting
product Clark claims as his own.

All of that matters for purposes of the statutory damages
analysis because, assuming IEEE had an implied license, no
infringement occurred prior to the October, 2014, registration
of the work.

And, if the license was irrevocable, no

infringement occurred after the October, 2014, registration
either.

However, if IEEE had a license, but the license was

revocable, and plaintiff successfully revoked the license in
late 2014, no infringement occurred prior to the October, 2014,
registration.

Finally, if IEEE holds a joint copyright

interest, this case is of course entirely without merit.

That is not to say, of course, that defendant has no other
defenses to plaintiff’s claim of copyright infringement.

It is

only to say, for purposes of the statutory damages analysis,
that the potential existence of an implied license and the
question of its revocability creates disputed issues of material
fact with respect to whether continuing infringement began
before plaintiff’s October, 2014, registration of the Work.

Accordingly, material issues of fact preclude summary
judgment on plaintiff’s request for statutory damages and
attorney’s fees, and the motion is DENIED.

37

B.

Injunctive Relief

Defendant further argues that Intellitech’s claim for
injunctive relief is moot, because it turns entirely on the
prospect that IEEE will incorporate the Clause (or language from
the Clause) into the P1838 standard.

Because IEEE’s current

“placeholder draft” steers clear of language used in the Clause,
and because IEEE has stated it has no intention of using the
Clause in the eventual P1838 standard, IEEE argues that the
“allegedly wrongful behavior cannot reasonably be expected to
recur.”

Def.’s Mem. in Supp. of Mot. for Summary Judgment at 19

(quoting Adams v. Bowater Inc., 313 F.3d 611, 613 (1st Cir.
2002)).

In response, plaintiff points out that IEEE has given

similar assurances in the past, and its “past assurances are not
a good predictor of its future conduct.”

Pl.’s Mem. in Opp. to

Summary Judgment at 20.

“Where during litigation a defendant ceases to engage in
challenged conduct and restores the status quo ante, the lawsuit
may or may not be moot.”
613 (1st Cir. 2002).

Adams v. Bowater Inc., 313 F.3d 611,

“The Supreme Court has said that such a

case is moot only if the defendant meets his ‘heavy burden’ of
persuading the court that it is ‘absolutely clear that the
allegedly wrongful behavior could not reasonably be expected to
recur.’”

Id. (quoting Friends of the Earth, Inc. v. Laidlaw

38

Environmental Servs., 528 U.S. 167, 189 (2000)) (additional
citations omitted).

Defendant’s assurance that the conduct will not be repeated
weighs in favor of a finding of mootness.

See Adams, 313 F.3 at

614 (had defendant stated on the record “without hesitation”
that challenged conduct would not reoccur, “this almost
certainly would have persuaded [the court] that the quarrel was
moot.”).

However, “as a general rule of thumb, a defendant may

not render a case moot by voluntarily ceasing the activity of
which the plaintiff complains; were the opposite true, a
defendant could immunize itself from suit by altering its
behavior so as to secure a dismissal, and then immediately
reinstate the challenged conduct afterwards.”

Brown v. Colegio

de Abogados de P.R., 613 F.3d 44, 49 (1st Cir. 2010). 8
Intellitech’s skepticism in this case is plausible, if only
because IEEE previously represented that its P1838 working group
would not incorporate the Clause into drafts of the developing
P1838 standard.

See, e.g., Document No. 14-5, at p. 3.

8

Yet,

“The voluntary cessation doctrine does not apply when the
voluntary cessation of the challenged activity occurs because of
reasons unrelated to the litigation.” Am. Civil Liberties Union
of Massachusetts v. U.S. Conference of Catholic Bishops, 705
F.3d 44, 55 (1st Cir. 2013) (quoting M. Redish, Moore's Fed.
Practice, § 101.99[2]) (additional citations omitted). However,
it is not altogether clear from the record that IEEE’s conduct
ceased because of reasons unrelated to the litigation.
39

Tiger Team 4 later circulated drafts that, as IEEE concedes,
“employ[ed] language from the Clause.”
Summary Judgment at 15.

Def.’s Opp. to Mot. for

And, while Tiger Team 4’s drafts have

been incorporated into the overall P1838 draft standard, the
P1838 standard has not been finalized.

Accordingly, defendant’s

past actions may be said to “justify a fear of repetition,” if
weakly.

Brown, 613 F.3d at 49.

Whether injunctive relief will be appropriate in this case
remains to be seen.
that it will.

On the current record, it does not appear

Too many substantive issues related to the

fundamental viability of Intellitech’s claims remain to be
resolved before any serious consideration of injunctive relief
can begin.

And it does no harm to IEEE to leave the issue open

on the back burner while those substantive matters are addressed
and resolved.

CONCLUSION
For the foregoing reasons, the court concludes that the
existence of a genuinely disputed material facts preclude the
entry of summary judgment on plaintiff’s motion for partial
judgment as to liability.

Genuinely disputed material facts

also preclude entry of summary judgment on defendant’s motion
for judgment on plaintiff’s claims for statutory damages,
attorneys’ fees and injunctive relief.
40

Accordingly, plaintiff's

motion for partial summary judgment (document no. 60), and
defendant’s motion for partial summary judgment (document no.
57) are both necessarily DENIED.

SO ORDERED.

____________________________
Steven J. McAuliffe
United States District Judge
May 23, 2018
cc:

Gary E.
Stephen
Todd A.
Jeffrey

Lambert, Esq.
B. Mosier, Esq.
Sullivan, Esq.
C. Spear, Esq.

41