The Social Science History Association v. Duke University
ORDER GRANTING IN PART AND DENYING IN PART 42 Plaintiff's Motion for Summary Judgment, and GRANTING IN PART AND DENYING IN PART 52 Defendant's Motion for Summary Judgment. Signed by US District Judge Terrence W. Boyle on 7/10/2014. (Fisher, M.)
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF NORTH CAROLINA
THE SOCIAL SCIENCE HISTORY
This cause comes before the Court on plaintiffs and defendant's motions for summary
judgment. The parties have filed their responses and replies and the matters are ripe for review.
For the reasons discussed below, both motions are granted in part and denied in part.
Plaintiff is a Michigan non-profit organization and the editor of an academic journal,
Social Science History, which has been published by Duke University Press since the 1980s. In
the 1990s, plaintiff encountered financial difficulties but wanted to continue to publish its
journal. In 1996, plaintiff and Duke Press entered into an editing and publishing agreement to
memorialize plaintiffs wish to no longer retain ultimate financial responsibility for the journal
and Duke Press' willingness to take on that financial responsibility. The agreement lays out the
roles of the parties with plaintiff as the editor responsible for content and Duke as the publisher
and also the party responsible for membership record keeping and collection of dues, half of
which would be paid to plaintiff by Duke at the end of each fiscal year. The 1996 agreement was
to remain in effect for at least five years, and thereafter it was to automatically renew each year
"until one of the parties provides notice to the other that it wishes to discontinue its participation
in the journal," such notice to be provided in essence eighteen months before it took effect. [DE
31-1 ]. Duke has been publishing the journal since the parties entered into the 1996 agreement.
In 2011, plaintiff sent out requests for proposals to several academic publishers, including
Duke, to solicit new bids for publishing services. By letter dated June 22, 2012, plaintiff gave
Duke written notification that it wished to "discontinue its participation with Duke University
Press in publishing its journal Social Science History made April 16, 1996" and that the
agreement "shall not be automatically renewed after the conclusion of the calendar year 2013."
[DE 43-4]. By letter dated July 5, 2012, Duke notified plaintiff that its understanding of
plaintiffs letter was "that [plaintiff] will fully discontinue its participation in Social Science
History at the end of the 2013 volume, and that Duke University Press will assume full
ownership of and responsibility for the journal as of the 2014 volume .... " [DE 43-2].
Plaintiff thereafter filed the instant action alleging claims for declaratory judgment as to
contractual obligations, breach of contract, copyright infringement, accounting and disgorgement
for unjust enrichment, declaratory judgment of copyright infringement, declaratory judgment for
false designation of origin under the Lanham Act, and for specific performance. Duke answered
the complaint and filed counterclaims for anticipatory breach of contract, a declaration that
plaintiff has discontinued its participation in the journal, and breach of contract. Plaintiff seeks
summary judgment on its first claim and Duke's first and second counterclaims, and asks that the
Court declare that it can terminate its relationship with Duke commencing in 2014. Duke seeks
summary judgment in its favor on plaintiffs second through seventh claims for relief as well as
on its third counterclaim. Duke further seeks summary judgment in its favor on plaintiffs first
and its first and second counterclaims for relief.
A motion for summary judgment may not be granted unless there are no genuine issues
of material fact for trial and the movant is entitled to judgment as a matter of law. Fed. R. Civ.
P. 56(a). The moving party bears the initial burden of demonstrating the absence of a genuine
issue ofmaterial fact. Celotex Corp. v. Catrett, 477 U.S. 317,323 (1986). Ifthat burden has
been met, the non-moving party must then come forward and establish the specific material facts
in dispute to survive summary judgment. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475
U.S. 574, 588 (1986). In determining whether a genuine issue of material fact exists for trial, a
trial court views the evidence and the inferences in the light most favorable to the nonmoving
party. Scott v. Harris, 550 U.S. 372, 378 (2007). However, "[t]he mere existence of a scintilla
of evidence" in support of the nonmoving party's position is not sufficient to defeat a motion for
summary judgment; "there must be evidence on which the [fact finder] could reasonably find for
the [nonmoving party]." Anderson v. LibertyLobby, Inc., 477 U.S. 242, 252 (1986). Speculative
or conclusory allegations will not suffice. Thompson v. Potomac Elec. Power Co., 312 F.3d 645,
649 (4th Cir. 2002).
A. Contractual Obligations
Plaintiffs first claim for relief seeks declaratory judgment as to the obligations of the
parties under the 1996 agreement, specifically in regard to the termination of the agreement. 28
U.S.C. §§ 2201-2202. "A court faces a conceptually difficult task in deciding whether to grant
summary judgment on a matter of contract interpretation." World-Wide Rights Ltd. P'ship v.
Combe Inc., 955 F.2d 242,245 (4th Cir. 1992). Summary judgment is only appropriate where
the contract is unambiguous or where any ambiguities can be definitively resolved by extrinsic
evidence. Washington Metro. Area Transit Auth. v. Potomac Inv. Properties, Inc., 4 76 F .3d 231,
235 (4th Cir. 2007). The parties agree the Michigan law governs the 1996 contract. See Klaxon
Co. v. Stenor Elec. Mfg., 313 U.S. 487,496-97 (1941). Under Michigan law, interpretation of a
contract requires first and foremost an understanding of the intention of the parties, and to
properly interpret particular language within the contract, a court must consider the entire
contract. Mcintosh v. Groomes, 227 Mich. 215,218, 198 N.W. 954,955 (1924). A court
determines the intent of the parties by affording the language of the contract its plain and
ordinary meaning. In re Smith Trust, 480 Mich. 19, 24, 745 N.W.2d 754, 758 (2008).
The 1996 agreement clearly indicates that, irrespective of the financial arrangement,
plaintiff remained the owner and editor of the content of the journal. The journal was to be
published by Duke expressly "on behalf of [plaintiff]," and upon termination of the agreement,
ownership of all extant issues, all contracts with third parties relating to extant issues, and all
copyrights in extant issues would return to plaintiff. Paragraph six of the agreement expressly
reserves to plaintiff"ownership and copyright in all issues of the journal produced by Duke
during the lifetime of this Agreement."
Under Duke's interpretation of the agreement, the following language- "until one of the
parties provides notice to the other that it wishes to discontinue its participation in the journal"should be interpreted to provide that once either party elects to withdraw from the contract, the
party remaining would retain control over and ownership of the journal. Indeed, if considered in
isolation, such language could be interpreted to have the effect posited by Duke. However, in
accordance with Michigan law, the Court need not consider such language in isolation in order to
understand its plain meaning. Rather, having considered the contract as a whole, including the
clearly expressed intent that the rights to the journal and its contents remain with plaintiff, the
above-referenced language is properly interpreted to refer to either party's intent to withdraw
from participation in the terms of the agreement, without effect on plaintiffs ownership of the
journal. The Court thus holds that the intention of the parties as evidenced by the agreement is
plain and unambiguous, and that summary judgment in favor of plaintiff on its first claim for
relief for declaratory judgment is therefore appropriate. In light of this holding, summary
judgment for plaintiff is appropriate on Duke's first and second counterclaims for anticipatory
breach of contract and for declaratory judgment that plaintiff has discontinued its participation in
B. Breach ofContract
Plaintiffs second claim for relief is for breach of contract. Plaintiff alleges that Duke
breached the express terms of the contract by publishing the journal electronically, by failing to
provide copyright registrations to plaintiff upon demand, and by failing to provide plaintiff with
membership lists upon demand. The elements of breach of contract under Michigan law are (1)
the existence of a contract, (2) the terms of which require some performance, (3) a party who has
breached the terms of the contract, and (4) which breach caused injury to the other party.
Webster v. Edward D. Jones & Co., L.P., 197 F.2d 815, 819 (6th Cir. 1999). While Michigan
law recognizes an implied covenant of good faith and fair dealing in the performance and
enforcement of contracts, it does not recognize a claim for breach of such implied covenant
separate from an action on the underlying contract, nor can the implied covenant override
express contract terms. Burton v. William Beaumont Hosp., 3 73 F. Supp.2d 707, 718-19
(E.D.Mich. 2005). Plaintiffs breach of contract claim insofar as it is based on any breach of the
implied covenant of good faith and fair dealing therefore fails.
Plaintiff alleges that Duke has breach the 1996 agreement by publishing and distributing
the journal electronically. Duke contends that pursuant to the publishing and editing agreement
it was authorized to electronically publish the journal and license it. Paragraph six of the
agreement expressly provides Duke with the right to sell all in-print issues of the journal, set
prices as it sees fit, and collect all related revenues. The same paragraph further provides Duke
with the right to license the use of the copyrighted material by a third party on a nonexclusive
basis and to set and collect any related permission fees.
In 2001, plaintiff contacted Duke to inquire about participation in a digital library
collection by JSTOR, and the journal was added to JSTOR's digital library pursuant to plaintiffs
request. Cohn Dec.~ 15 [DE 53-2]; 14 Nov. 2003 Rep. ofPl's Publications Committee Meeting
5 (committee gave its approval for electronic availability through JSTOR);
endorsed offer to add journal to JSTOR's arts and science complement) [DE 54-3]. Again with
plaintiffs consent, Duke made the journal available in electronic form through Project Muse,
another electronic publisher/distributor. Cohn
16 [DE 53-2]. In July 2004, Duke notified
plaintiffs members of electronic access to the journal available through JSTOR and Project
Muse. [DE 53-12]. Such action was specifically addressed at a meeting between plaintiff and
Duke held later that month. [DE 53-11].
Annual marketing reports provided by Duke to plaintiff reflect usage statistics for the
electronic publication or distribution of the journal, and annual financial reports provided to
plaintiff by Duke reflect the membership fees and revenues collected by Duke related to
electronic publication or distribution of the journal. Dilworth Dec.~~ 7-11 [DE 53-13]; Ex. A &
B to Dilworth Dep. [DE 53-14 & 53-15]. The annual reports further include information such as
the ten most frequently read articles accessed through electronic distributors; the revenue
generated through royalties, electronic distribution, as well as direct subscriptions; and the
number of electronic subscriptions, both domestic and international, for volumes beginning in
1999. !d. Prior to March 4, 2013, Duke was not notified that plaintiff challenged its authority to
publish or distribute the journal electronically or collect revenues associated with such actions.
While the agreement does not expressly provide Duke with the right to electronically
publish the journal, such authorization is implied by the plain terms of the agreement and is
evidenced by the actions of the parties. Though the relevant contract provision is subject to
different interpretations and is therefore properly construed as ambiguous, the extrinsic evidence
makes clear that such provision would include the publication and distribution of the journal in
electronic format. That the parties discussed the availability of electronic publishing at the time
they entered into the agreement, [DE 53-3], and that plaintiff was aware through both annual
updates and discussions with Duke that Duke was making the journal available in electronic
form since at least 1999 and was collecting revenues accordingly is evidence ofthe parties'
mutual understanding that the electronic publishing or distribution of the journal would be
permitted under the agreement. Indeed, when asked whether plaintiff had agreed that Duke
could "license the content of the journal to electronic publications platforms," plaintiff's former
executive director responded in the affirmative. Austin Depo. at 85 [DE 72-1].
Plaintiff has presented no evidence that either party construed the contract otherwise, and
the Court notes that plaintiff challenged Duke's electronic distribution as beyond the scope of its
publishing authorization only after plaintiff had attempted to withdraw from the 1996 agreement
and was facing Duke's contrary interpretation of plaintiff's right to do so. Duke's evidence
provides a sufficient basis upon which to find that both parties understood the 1996 agreement to
authorize Duke to electronically publish and distribute the journal, and thus plaintiffs claim for
breach of contract due to Duke's electronic publishing and collection of related revenues fails.
In regard to the copyright registration claim, a plain reading of the agreement reveals no
term that required Duke to provide plaintiff with copies of copyright registration. The agreement
does expressly provide that Duke was obligated to register the copyrights in plaintiffs name for
the issues it produced, but plaintiff has not alleged that Duke failed to register or properly
register any of the copyrights for any issue it produced, and thus plaintiff has not alleged that
Duke has breached a term of the agreement. Nor has plaintiff demonstrated that by failing to
provide it with copies of the copyright registrations Duke has caused plaintiff to suffer any harm.
Paragraph fourteen of the agreement states that "Duke shall provide to [plaintiff] at no
cost a monthly printed listing of all current members .... " Duke contends that, prior to the filing
of the complaint, it provided plaintiff with updated membership lists in February and October
2013, and that any failure to provide additional membership lists constitutes an immaterial
breach. Plaintiff responds that such failure to provide membership lists is a material breach. "In
determining whether a breach is material, the court should consider whether the nonbreaching
party obtained the benefit it reasonably expected to receive." Omnicom of Michigan v. Giannetti
Inv. Co., 221 Mich. App. 341, 348, 561 N.W.2d 138, 141 (1997). A court may also consider
whether and the extent to which the injured party can be compensated for lack of complete
performance and whether there has been partial performance. !d.
The Court finds that, even in light of any failure to provide plaintiff with membership
lists, plaintiff ultimately received the benefit it reasonably expected to receive when it entered
into the 1996 agreement. Indeed, Duke has published the journal for approximately fifteen
years, plaintiff has not alleged that Duke failed to register appropriate copyrights in its name, nor
has plaintiff come forward with any evidence that Duke has failed to pay plaintiff its portion of
membership dues during the lifetime of the agreement. While Duke's failure to provide
membership lists to plaintiff may have been a breach of the agreement, such breach was not
material. Moreover, Duke has demonstrated that it provided plaintiff with membership lists in
January, February, and October 2013. [DE 53-19; 53-20]. This partial performance further
supports that the breach ofthe membership list term was not material. Finally, the Court is
unaware how damages might reasonably be calculated to compensate plaintiff for Duke's failure
to fully perform under this term of the agreement. In light of the foregoing, summary judgment
in favor of Duke is appropriate on plaintiff's breach of contract claim and plaintiff's seventh
claim for relief for specific performance.
Breach of Contract Counterclaim
The Court next considers Duke's third counterclaim for breach of contract. Duke
contends that plaintiff violated the terms of the 1996 agreement when, prior to commencement of
this suit, plaintiff contacted third parties and induced them to withhold electronic publishing
revenues otherwise owed to Duke in light of plaintiff's assertion that Duke's electronic
publication of the journal was in violation of the 1996 agreement. Because, as discussed above,
the Court finds as a matter of law that the 1996 agreement permitted Duke during its term to
electronically publish the journal and to collect any fees associated therewith, plaintiff's actions
to interfere with Duke's collection of fees for electronic publishing constitute a breach of the
1996 agreement. Duke is entitled to summary judgment in its favor on this claim and plaintiff is
ordered to relinquish any claim to funds owed to Duke and that are currently being withheld by
Project Muse, JSTOR, and High Wire Press. Cohn Dec.
21 [DE 53-1].
COPYRIGHT & TRADEMARK CLAIMS
Plaintiffs third through seventh claims for relief concern its intellectual property rights in
the journal. Plaintiff contends that Duke has infringed its copyrights in the journal by publishing
the journal electronically, that plaintiff is entitled to an accounting and disgorgement of all
royalties and profits received by Duke from its electronic publication of the journal, and for a
declaratory judgment of copyright infringement.
"In order to prove copyright infringement, a plaintiff must show that it owns a valid
copyright, and it must establish that the defendant engaged in unauthorized copying of the work
protected by the copyright." Nelson-Salabes, Inc. v. Morningside Dev., LLC, 284 F.3d 505, 513
(4th Cir. 2002). As the Court has already found that the 1996 agreement permitted Duke to
publish and distribute the journal electronically, no copyright infringement has occurred and
Duke is entitled to summary judgment in its favor on plaintiffs copyright infringement claim. 1
In light of the Court's ruling on plaintiffs copyright infringement claim, plaintiffs
related claims for accounting and disgorgement and declaratory judgment for copyright
Moreover, given plaintiffs knowledge of Duke's conduct and apparent acquiescence,
plaintiffs actions at this late date in attempting to assert its copyrights may arguably be estopped
by equitable principles. See Service & Training, Inc. v. Data General Corp., 963 F.2d 680, 68990 (4th Cir. 1992); Armenta v. City ofAshville Downtown Dev. Office, 1:94CV57, 1996 WL
677119 (W.D.N.C. Mar. 26, 1996) (to be estopped from asserting a copyright infringement claim
a plaintiff must have been "aware of the infringing conduct and yet [have] acted in a way that
induced the [d]efendants reasonably to rely upon such action to their detriment."). The Court
need not reach such issue, however, as it has found that the 1996 agreement authorized Duke to
electronically publish and distribute the journal. See 4 Nimmer on Copyright § 13 .07( "a
purported 'consent' should stand or fall as a copyright assignment or license, without regard to
the principles of estoppel.").
infringement also fail. Regarding plaintiffs sixth claim for relief involving its trademark
protection and any threatened false designation of origin, Duke states that it has "no immediate
intention of publishing a journal under the name Social Science History in 2014." [DE 53 at 19];
see also Cohn Dec.~ 23 [DE 53-2]. Plaintiff has presented no evidence that Duke is currently
engaged in use of its mark, and in this posture plaintiffs trademark claim for false designation of
origin is not ripe as there is no live issue currently before the Court. Murphy v. Hunt, 455 U.S.
478,481 (1982) (citation omitted).
Therefore, for the reasons discussed above, plaintiffs motion for partial summary
judgment [DE 42] is GRANTED IN PART and DENIED IN PART. Duke's motion for
summary judgment [DE 52] is also GRANTED IN PART and DENIED IN PART.
Summary judgment is entered in plaintiffs favor on its first claim for relief and it is
hereby DECLARED that the 1996 publishing and editing agreement between plaintiff and Duke
Press terminated on January 1, 2014, and plaintiff may subsequently publish its journal Social
Science History with the academic press of its choosing. Summary judgment is further entered in
favor of plaintiff on Duke's first and second counterclaims.
Summary judgment is entered in favor of Duke on plaintiffs second through seventh
claims as well as Duke's third counterclaim. Plaintiff is ORDERED to relinquish any claim to
funds currently being withheld by Project Muse, JSTOR, and High Wire Press as a result of
plaintiffs claim to electronic publishing or distributing revenues owed to Duke for actions taken
pursuant to the I996 agreement.
As no claims remain for adjudication, the clerk is DIRECTED to enter judgment
accordingly and to close the file.
SO ORDERED, this _(/2 day of July, 2014.
T RRENCE W. BOYLE
UNITED STATES DISTRICT JUDGE
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