BROWNSTEIN v. LINDSAY et al
Filing
104
OPINION filed. Signed by Judge Joel A. Pisano on 11/30/2012. (mmh)
UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY
___________________________________
:
:
:
Plaintiff,
:
:
v.
:
:
TINA LINDSAY, et al.
:
:
Defendants.
:
___________________________________ :
PETER BROWNSTEIN
Civil Action No. 10-1581 (JAP)
OPINION
PISANO, District Judge.
I. Introduction
In this copyright dispute, Plaintiff Peter Brownstein sought a declaration that he is coauthor of a work that registered with the United States Copyright Office by defendant Tina
Lindsay. In addition to the declaration, the complaint sought replevin of copies of the work in
the Defendants’ possession. In February 2012, a jury trial was held during which Defendants
moved for judgment as a matter of law pursuant to Federal Rule of Civil Procedure 50. The
Court granted that motion and dismissed Plaintiff’s claims. The Court also severed
Defendants counterclaim to invalidate plaintiff’s December 23, 2009 copyright registrations.
Presently before the Court are the parties’ motions for summary judgment as to that
counterclaim.
II. Factual Background
On May 6, 2009, Plaintiff, who at the time was a shareholder in TAP Systems Inc
(“TAP”) and a member in Ethnic Technologies LLC (“Ethnic”) sued a number of defendants,
including the Defendants in this case, alleging that he was an oppressed minority shareholder.
See Complaint attached as Exh. 1 to Klaproth Decl. That case settled and on May 25, 2010
the parties entered into a settlement agreement (the “Agreement”) that provided for, among
other things, a buyout of Plaintiff’s ownership interests in TAP and Ethnic. Settlement
Agreement attached as Exh. 2 to Klaproth Decl. Plaintiff resigned from all positions he held
at TAP or Ethnic and the Agreement extinguished “any and all other right, title and interest”
of Plaintiff in those entities. The Agreement further provided that Plaintiff would “return all
property” of the defendants in that case to them including, but not limited to, “the TAP
checkbook, business certificates of any kind, financial or other records, contracts, lists of
customers, lists of licensees, [and] software in any form.” Id. § 2.9.
After the filing Plaintiff’s oppressed shareholder suit but entry of the Agreement, on
December 23, 2009, while Plaintiff was presumably still a shareholder of TAP and a member
of Ethnic, Plaintiff registered with the Copyright Office two sets of computer programs. The
first set, written in 1998, contained works entitled “Ethnic Encoding System Module –
Tap05”; “Ethnic Encoding System Module – Tap06”; “Ethnic Encoding System Module –
Tap08”; “Ethnic Encoding System Module – Tap10”; “Ethnic Encoding System Module –
Tap15”; “Ethnic Encoding System Job Control Language Module”; and the second set,
written in 1997, contained works entitled “Ethnic Encoding System Module – Tap09”; and
“Ethnic Encoding System Module – Tap22.” Klaproth Decl. Ex. 3. While Plaintiff identifies
himself as the author of these derivative works, the computer programs expressly state that
they were “Created for TAP Systems, Inc.” Id.
According to Plaintiff, these programs were “additions to the ethnic identification
system” that was created by defendant Lindsay. Trial Tr. 233:8-11; 241:8-15. That system
combined with these computer programs ultimately became a product known as the TAP
System. Trial Tr. 206:24-207:2.
2
Defendant’s counterclaim seeks to invalidate these December 2009 registrations.
Defendant has moved for summary judgment arguing that, any rights that Plaintiff may have
had in these programs were extinguished by the Agreement.
III. Analysis
A court shall grant summary judgment under Rule 56 of the Federal Rules of Civil
Procedure “if the movant shows that there is 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). The substantive law
identifies which facts are critical or “material.” Anderson v. Liberty Lobby, Inc., 477 U.S.
242, 248 (1986). A material fact raises a “genuine” issue “if the evidence is such that a
reasonable jury could return a verdict” for the non-moving party. Healy v. N.Y. Life Ins. Co.,
860 F.2d 1209, 1219 n.3 (3d Cir. 1988).
On a summary judgment motion, the moving party must show, first, that no genuine
issue of material fact exists. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). If the
moving party makes this showing, the burden shifts to the non-moving party to present
evidence that a genuine fact issue compels a trial. Id. at 324. The non-moving party must
then offer admissible evidence that establishes a genuine issue of material fact, id., not just
“some metaphysical doubt as to the material facts.” Matsushita Elec. Indus. Co. v. Zenith
Radio Corp., 475 U.S. 574, 586 (1986).
The Court must consider all facts and their logical inferences in the light most
favorable to the non-moving party. Pollock v. American Tel. & Tel. Long Lines, 794 F.2d
860, 864 (3d Cir. 1986). The Court shall not “weigh the evidence and determine the truth of
the matter,” but need determine only whether a genuine issue necessitates a trial. Anderson,
477 U.S. at 249. If the non-moving party fails to demonstrate proof beyond a “mere scintilla”
3
of evidence that a genuine issue of material fact exists, then the Court must grant summary
judgment. Big Apple BMW v. BMW of North America, 974 F.2d 1358, 1363 (3d Cir. 1992).
Plaintiff opposes Defendants’ motion on a number of grounds. First, Plaintiff argues
that Defendants lack standing to bring their claim because they can only show injury to TAP,
for whom the work was created, who is not a party to the action. To establish Article III
standing, Appellants must show: “(1) injury-in-fact, which is an invasion of a legally
protected interest that is (a) concrete and particularized, and (b) actual or imminent, not
conjectural or hypothetical; (2) a causal connection between the injury and the conduct
complained of; and (3) it must be likely, as opposed to merely speculative, that the injury will
be redressed by a favorable decision.” Danvers Motor Co., Inc. v. Ford Motor Co., 432 F.3d
286, 290–91 (3d Cir. 2005). Here, the Court finds this standard to be met.
The record shows that by way of a September 26, 1997 joint venture agreement with
Consumer Marketing Research (“CMR”), the TAP System (which is made up of the programs
Plaintiff claims to own) was to be transferred to a joint venture entity. Klaproth Reply Decl.,
Ex. 3. Plaintiff acknowledged that TAP and CMR combined their assets and resources in this
joint venture. Trial Tr. 211:5-10. In a subsequent agreement dated December 28, 2000, by
which Ethnic was created, TAP and CMR acknowledged that the TAP System had been the
exclusive property of TAP, and transferred the TAP System to Ethnic. Klaproth Reply Decl.,
Ex. 4. Significantly, Plaintiff read and initialed the December 2000 agreement. Id., Trial Tr.
214:4-24. Thus, the Court finds no lack of standing.
Second, Plaintiff argues that Defendants have not met the standards for copyright
cancellation set forth in 17 U.S.C. §411(b) and 37 C.F.R. § 201.7. The Court agrees with
Defendants’ that those provisions are not applicable here, at least in the manner in which
Plaintiff argues. The threshold determination as to the ownership of the works at issue is to
4
be made by the Court, as Defendants seek to invalidate the registration because Plaintiff had
no right to register the work, not because of some regulatory defect.
Finally, the Court rejects Plaintiff’s remaining arguments, as they are premised on the
assumption that Plaintiff authored and therefore had exclusive rights to the derivative works.
The Court has previously found, however, that Plaintiff’s co-authorship claim was without
merit. Trial Tr. 333-340. This was an issue in the Rule 50 motion decided during trial.
Further, the derivative works themselves state they were created “for TAP Systems, Inc.”
Documents in the record, specifically, the 1997 and 2000 agreements, refer to the relevant
programs as belonging exclusively to TAP. Finally, under the settlement Agreement, Plaintiff
agreed to return all property, including the programs at issue in the counterclaim, to the
Defendants, and the Agreement extinguished “any and all other right, title and interest” of
Plaintiff in TAP and Ethnic. As such, the Court finds that, under the undisputed facts,
Defendants are entitled to judgment as a matter of law on their counterclaim.
IV. Conclusion
For the reasons above, the Court grants Defendants’ motion for summary judgment on
its counterclaim, and denies Plaintiffs’ cross motion. An appropriate Order accompanies this
Opinion.
/s/ JOEL A. PISANO
United States District Judge
Date: November 30, 2012
5
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?