Israel v. University of Utah et al

Filing 62

MEMORANDUM DECISION AND ORDER denying Plaintiff's 37 Motion for Leave to File Amended Complaint. Signed by Judge Ted Stewart on 4/18/2017. (eat)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH
ESTHER ISRAEL,
MEMORANDUM DECISION AND
ORDER DENYING PLAINTIFF’S
MOTION FOR LEAVE TO AMEND

Plaintiff,
v.
UNIVERSITY OF UTAH, DONALD
STEVEN STRASSBERG, JORDAN
ELIZABETH RULLO, JULIA
MACKARONIS, KELLY KINNISH and
MICHAEL MINER,

Case No. 2:15-CV-741 TS
District Judge Ted Stewart

Defendants.

This matter is before the Court on Plaintiff’s Motion for Leave to File an Amended
Complaint. For the reasons discussed below, the Court will deny the Motion.
I. BACKGROUND
Esther Israel (“Plaintiff”) filed a Complaint against the University of Utah, Donald
Steven Strassberg, Jordan Elizabeth Rullo, Julia Mackaronis, Kelly Kinnish, and Michael Miner
(collectively, “Defendants”) on October 16, 2015. Plaintiff filed a Motion for Leave to Amend
on September 26, 2016, seeking to add an additional alleged infringing publication titled
“Beholder and Beheld: A Multilevel Model of Perceived Sexual Appeal” (the “Publication”) and
three additional state-law claims of: (1) breach of fiduciary duty/implied warranty of good faith
against the University of Utah and Dr. Strassberg; (2) promissory estoppel; and (3) violation of
the common law right of publicity against the University of Utah, Dr. Strassberg, and Dr. Rullo.
Defendants oppose Plaintiff’s Motion, claiming the addition of these claims would be futile.

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II. MOTION TO AMEND STANDARD
Generally, once a responsive pleading is filed, “a party may amend its pleading only with
the opposing party’s written consent or the court’s leave.” 1 Federal Rule of Civil Procedure
15(a) specifies that “[t]he court should freely give leave when justice so requires.” 2 The
Supreme Court has indicated that leave sought should be given unless “undue delay, bad faith or
dilatory motive on the part of the movant, repeated failure to cure deficiencies by amendments
previously allowed, undue prejudice to the opposing party by virtue of allowance of the
amendment, [or] futility of [the] amendment” 3 is present. “A proposed amendment is futile if
the complaint, as amended, would be subject to dismissal.” 4
III. DISCUSSION
To resolve Plaintiff’s Motion, the Court must consider whether amendment would be
futile. The Court will consider Plaintiff’s proposed additional claims in turn.
A.

COPYRIGHT INFRINGEMENT
In order to establish copyright infringement, two elements must be met: (1) ownership of

a valid copyright; and (2) copying of constituent elements of the work that are original. 5
Defendants assume for the purposes of this Motion that Plaintiff has a valid copyright in
her work. Thus, Plaintiff must sufficiently allege that Defendants copied constituent elements of
her work that are original. To prove copying, Plaintiff must establish that the Defendants copied
1

Fed. R. Civ. P. 15(a)(2).

2

Id.

3

Foman v. Davis, 371 U.S. 178, 182 (1962).

4

Jefferson Cty. Sch. Dist. No. R-1 v. Moody’s Inv’rs Servs., Inc., 175 F.3d 848,
859 (10th Cir. 1999).
5

Blehm v. Jones, 702 F.3d 1193, 1199 (10th Cir. 2012).

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Plaintiff’s work as a factual matter and, as a mixed issue of fact and law, that the elements copied
were protected. 6
To prove copying of legally protectable material, a plaintiff must demonstrate that there
is a substantial similarity between the legally protectable elements of the original work and
allegedly infringing work. 7 In order to decide whether two works are substantially similar, the
court asks “whether the accused work is so similar to the plaintiff’s work that an ordinary
reasonable person would conclude that the defendant unlawfully appropriated the plaintiff’s
protectable expression by taking material of substance and value.” 8 To determine whether the
defendant has copied legally protectable material, courts often utilize the “abstraction-filtrationcomparison” analysis. 9 This analysis is described as follows:
At the abstraction step, we separate the ideas (and basic utilitarian functions),
which are not protectable, from the particular expression of the work. Then, we
filter out the nonprotectable components of the product from the original
expression. Finally, we compare the remaining protected elements to the
allegedly copied work to determine if the two works are substantially similar. 10
Plaintiff states that the Publication “utilizes the Original Material as well as an
unpublished rating system (e.g., view, explicitness, picture quality and target population) Israel
placed in her Original Material to evaluate the pictures in her master’s thesis study; thus,

6

Jacobsen v. Deseret Book Co., 287 F.3d 936, 942 (10th Cir. 2002).

7

Id. at 942–43.

8

Id. at 943 (quoting Country Kids ‘N City Slicks, Inc. v. Sheen, 77 F.3d 1280, 1288 (10th
Cir. 1996)).
9

Id. at 943 n.5.

10

Id. (quoting Country Kids ‘N City Slicks, Inc., 77 F.3d at 1284–85).

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Mackaronis, Strassberg, Cundiff and Cann created a derivative work that is based on Israel’s
Original Material.” 11
Accordingly, using the abstraction-filtration-comparison test, the Court will analyze: (1)
the Plaintiff’s Original Materials, which consists of study pictures, 12 study text,13 and computer
syntax; 14 and (2) the unpublished rating system.
1.

Original Materials

The first step of the abstraction-filtration-comparison analysis is to separate the ideas
from the expression. The pictures within Plaintiff’s Original Materials were all taken from
“commercially available magazines . . . , websites . . . and clothing catalogues.” 15 Because the
pictures were taken from these sources, Plaintiff does not have any copyright in the individual
pictures. However, Plaintiff’s “original selections or arrangements of [unprotected] elements
may be protectable.” 16
Next, the text of the Original Materials appears to be copyrightable and protectable
material. It is well established that an author’s expression of ideas are protectable, however, the
ideas themselves are not protectable. 17 Applying this to the text of the Original Materials, the

11

Docket No. 37 Ex. 1 ¶36.

12

Docket No. 43 Ex. 1.

13

Id. Ex. 2.

14

Id. Ex. 3.

15

Id. Ex. 4, at 52.

16

Savant Homes, Inc. v. Collins, 809 F.3d 1133, 1139 (10th Cir. 2016).

17

Feist Publication, Inc. v. Rural Telephone Servs. Co., Inc., 499 U.S. 340, 350

(1991).

4

idea of a voluntary survey based on sexuality is not protectable. However, similar to Plaintiff’s
arrangement of pictures, her expression is protectable.
Finally, the computer syntax of the Original Materials may have protectable elements.
However, Plaintiff’s proposed Amended Complaint does not provide enough information for the
Court to gauge whether or not protectable elements are present.
The next step in the abstraction-filtration-comparison analysis is to compare the
remaining protected elements to the allegedly copied work to determine if the two works are
substantially similar. Copyright law only protects against the copying of expression, but ideas
themselves, or expression that falls under the “merger doctrine” is not copyrightable. 18 “Under
the merger doctrine, copyright protection is denied to expression that is inseparable from or
merged with the ideas, processes, or discoveries underlying the expression.” 19 Similarly, under
the scenes a faire doctrine, protection is denied to expressions that are “standard, stock, or
common to a particular topic or that necessarily follow from a common theme or setting.” 20
Comparing the Original Materials pictures to the Publication, substantial similarity is not
met. The Publication used 34 photographs of men and 34 photographs of women from a variety
of media sources, similar to the Original Materials. 21 However, Plaintiff has not shown that the
Publication copied Plaintiff’s protectable selection and arrangement of photographs. The mere
idea of using photographs of men and women from media sources in a study about sexuality is
not protectable expression. Thus, there is no infringement.
18

Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 838 (10th Cir. 1993).

19

Id.

20

Id.

21

Docket No. 42 Ex. B, at 3.
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Next, comparing the Original Materials text to the Publication, substantial similarity is
also not met. As already established, Plaintiff has protection in the arrangement and selection of
her text. The Publication does not contain any verbatim copying of the arrangement and
selection from the Original Materials. While there may be a few sentences that are similar, this
does not establish infringement. Any similarities are due to the fact that both papers concern
similar subject matter and used similar testing methods.
Finally, substantial similarity is not present between the Original Materials computer
syntax and the Publication. Computer syntax may have potentially protectable elements;
however, Plaintiff does not provide enough information as to what her computer syntax entails,
or what the protectable elements of that computer syntax may be. Nor has she demonstrated that
Defendants used substantially similar computer syntax in the Publication. Thus, there can be no
infringement
Based on the above, the Court finds that Plaintiff has failed to adequately allege that the
Publication copied any protected elements of Plaintiff’s Original Materials. Therefore, Plaintiff
fails to state a claim, rendering amendment futile.
2.

Unpublished Rating System
Plaintiff does not definitively define what her “unpublished rating system” entails, but

rather gives examples as to what is considered her unpublished rating system. These examples
include things such as “view, explicitness, picture quality, and target population.” 22 Plaintiff
alleges that she placed this unpublished rating system in her Original Materials to help evaluate

22

Docket No. 37 Ex. 1 ¶36.

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the pictures in her master’s thesis study. 23 Plaintiff’s unpublished rating system is an idea, rather
than protectable expression, and therefore not subject to copyright protection. Even if it were
protectable, Defendants did not copy Plaintiff’s work as a factual matter because there is no
substantial similarity between the Publication and Plaintiff’s “unpublished rating system.”
Therefore, Plaintiff fails to state a claim, rendering it futile. Thus, Plaintiff’s leave to amend for
the addition of the Publication will not be permitted.
B.

LANHAM ACT
Plaintiff alleges that the Publication “failed to appropriat[e] credit [to] Plaintiff for the

Original Material published in [the Publication] under their names.” 24 Plaintiff asserts that this
violates the Lanham Act.
15 U.S.C. § 1125(a) states that:
[a]ny person who, on or in connection with any goods or services . . . uses in
commerce any word, term, name, symbol, or device, or any combination thereof,
or any false designation of origin, false or misleading description of fact, or false
or misleading representation of fact, which is likely to cause confusion . . .
mistake . . . or to deceive as to the affiliation, connection, or association of such
person with another person, or as to the origin . . . . 25
In order to prevail on a claim under the Lanham Act, the following elements must be met:
(1) the plaintiff has a protectable interest in the mark; (2) the defendant has used “an identical or
similar mark” in commerce; and (3) the defendant’s use is likely to confuse consumers. 26

23

Id.

24

Id. ¶ 55.

25

15 U.S.C.A. § 1125(a) (West 2017).

26

1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229, 1242 (10th Cir. 2013).

7

Here, Plaintiff has not alleged that she possess a protectable mark. In addition, Plaintiff
has failed to show that failing to use her name in the Publication constitutes use in commerce
likely to cause confusion. Therefore, this claim fails.
C.

STATE-LAW CLAIMS
Plaintiff seeks to add various state-law claims. Defendants argue that Plaintiff’s claims

are barred by the Governmental Immunity Act of Utah. “Compliance with the Immunity Act is a
prerequisite to vesting a district court with subject matter jurisdiction over claims against
governmental entities.” 27 Defendant argues that the addition of these state-law claims would be
futile for three reasons: (1) the Immunity Act bars Plaintiff’s claims; (2) Plaintiff did not file the
required notice of claim under the Immunity Act; and (3) Plaintiff’s proposed amendment was
not timely filed under the Immunity Act.
1.

Governmental Immunity Act of Utah

In order to determine whether a government entity is immune from suit for injury
resulting from the exercise of governmental functions, courts must examine three questions: (1)
whether the activity is a governmental function, for which the legislature has granted blanket
immunity; (2) if the activity is an immunized governmental function, whether that blanket
immunity has been waived in another section of the Act; and (3) if immunity has been waived,
whether the Act contains an exception to that waiver that would result in the retention of the
immunity despite the waiver. 28

27

Wheeler v. McPherson, 40 P.3d 632, 635 (Utah 2002).

28

Pigs Gun Club, Inc. v. Sanpete Cty., 42 P.3d 379, 382–83 (Utah 2002).

8

Here, Defendants’ actions fall under the blanket immunity granted under the Immunity
Act. 29 Because Defendant’s activity is immunized, the next step is to see whether blanket
immunity has been waived in another section of the Act. Under Utah Code Ann. § 63G-7301(1)(b) immunity is waived for “[a]ctions arising out of contractual rights or obligations.” The
Court must therefore consider whether Plaintiff’s proposed state-law claims arise out of
contractual rights or obligations.
As stated, Plaintiff seeks to assert claims for breach of fiduciary duty/implied warranty of
good faith, quasi contract/promissory estoppel, and common law right to publicity. In Sadwick v.
University of Utah, 30 this Court, per the Honorable Tena Campbell, found that a breach of
fiduciary duty is typically considered a form of tort. 31 Only if Plaintiff can point to facts that
would suggest that her “fiduciary duty claim is the extraordinary type sounding in contract and
not in tort,” 32 can her claim survive dismissal. Here, Plaintiff has pointed to no such facts.
Therefore, her breach of fiduciary duty claim does not arise out of contractual rights or
obligations and is barred by the Immunity Act.
As part of her breach of implied warranty of good faith claim, Plaintiff claims that “the
University of Utah entered into a contract with plaintiff to provide her educational services
towards a doctoral degree.” 33 Plaintiff claims that the University of Utah breached this implied
warranty. However, Plaintiff’s state-law claims against the University of Utah are barred by the

29

See UTAH CODE ANN. § 63G-7-201 (West 2016).

30

No. 2:00-CV-412 TC, 2001 WL 741285 (D. Utah Apr. 15, 2001).

31

Id. at *12 (D. Utah Apr. 15, 2001).

32

Id.

33

Docket No. 37 Ex. 1 ¶ 71.

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Eleventh Amendment. Therefore, amendment to allow this claim would be futile. Plaintiff also
asserts that Dr. Strassberg acted in bad faith and treated her unfairly. However, there are not
sufficient allegations that Plaintiff had a contractual relationship with Dr. Strassberg or that her
claims arise out of that relationship.
Plaintiff seeks to bring claims for quasi-contract and promissory estoppel based on an
email and letters exchanged between Plaintiff and Defendant. These items do not create any sort
of contractual relationship, but rather document the parties’ discussion as to whether Defendants
utilized Plaintiff’s methods or materials. Because these claims do not arise out of contractual
rights or obligations, these claims fail. 34
Finally, Plaintiff’s claimed right to publicity sounds in tort, not contract. Therefore,
immunity for these claims have not been waived.
2.

Notice Under the Governmental Immunity Act of Utah

Defendants also argue that Plaintiff has failed to comply with the notice requirements of
the Immunity Act. The Act provides:
Any person having a claim against a governmental entity, or against its employee
for an act or omission occurring during the performance of the employee’s duties,
within the scope of employment, or under color of authority shall file a written
notice of claim with the entity before maintaining an action, regardless of whether
or not the function giving rise to the claim is characterized as governmental. 35
The notice of a claim shall set forth: (i) a brief statement of the facts; (ii) the nature of the
claim asserted; (iii) the damages incurred by the claimant so far as they are known; and (iv) if the
claim is being pursued against a governmental employee individually as provided in Subsection
34

See Mecham v. Utah State Dep’t of Corrections, No. 2:09-CV-149 CW, 2011
WL 839862, at *2 (D. Utah, Mar. 9, 2011).
35

UTAH CODE ANN. § 63G-7-401(2).

10

63G-7-202(3)(c), the name of the employee. 36 The notice of claim must provide “enough
specificity in the notice to inform as to the nature of the claim so that the Defendant can appraise
its potential liability.” 37
In Yearsley v. Jensen, the plaintiff’s notice of claim alleged trespass and assault. 38 The
plaintiff then moved for leave to file an amended complaint, adding on “malicious” assault and
battery, and “malicious” arrest and prosecution. 39 The court in Yearsley did not allow the
plaintiffs to amend their complaint, and stated that “[n]o mention is made in [the notice of claim]
of any unlawful arrest or malicious prosecution . . . . [b]y no stretch of the facts can a claim for
the physical beating be construed to include a claim for malicious prosecution.” 40
Plaintiff’s Notice of Claim was her draft of her first Complaint for Copyright
Infringement and Unfair Competition. Within the Notice, there is no mention of any of the statelaw claims Plaintiff seeks to add. Further, there was nothing to put Defendants on notice that
Plaintiff might be asserting such claims. Because the Notice of Claim did not support or
indicate any of Plaintiff’s new claims, Plaintiff did not comply with the Immunity Act with her
Notice of Claim. Compliance is jurisdictional. Therefore, this Court lacks jurisdiction over
Plaintiff’s state-law claims and leave to amend will not be permitted.

36

Id. § 63G-7-401(3)(a).

37

Yearsley v. Jensen, 798 P.2d 1127, 1129 (Utah 1990).

38

Id. at 1128.

39

Id.

40

Id. at 1129.

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3.

Timeliness

Finally, Defendant argues that the relevant statute of limitations in the Immunity Act bars
Plaintiff’s state-law claims. Section 63G-7-402 of the Utah Code states:
A claim against a governmental entity, or against an employee for an act or
omission occurring during the performance of the employee’s duties, within the
scope of employment, or under color of authority, is barred unless notice of claim
is filed with the person and according to the requirements of Section 63G-7-401
within one year after the claim arises regardless of whether or not the function
giving rise to the claim is characterized as governmental. 41
The statute of limitations does not begin until the claimant knows, or through the exercise of
reasonable diligence, should have known of alleged claims. 42
Plaintiff knew or should have known of many of the alleged state-law claims as early as
2007. For example, Plaintiff alleges that Strassberg breached his fiduciary duty when he locked
Plaintiff out of his laboratory in 2007. 43 Plaintiff also should have known of the other alleged
claims sometime between 2009 and 2011, which is around the time she alleges that Defendants
published the allegedly infringing papers. Plaintiff’s counsel wrote a cease-and-desist letter on
April 1, 2011, noting Plaintiff’s awareness of the “unauthorized uses of her copyrighted masters
thesis work.” 44 Therefore, Plaintiff should have submitted a notice of claim well before October
2015. In sum, Plaintiff’s state-law claims must fail because the Immunity Act grants immunity,
because Plaintiff failed to include the new claims in her Notice, and because amendment would
be untimely.

41

UTAH CODE ANN. § 63G-7-402 (emphasis added).

42

Id. § 63G-7-401.

43

Docket No. 1 ¶ 17; Docket No. 37 Ex. 1 ¶ 69.

44

Docket No. 43 Ex. 16.

12

IV. CONCLUSION
It is therefore
ORDERED that Plaintiff’s Motion for Leave to Amend (Docket No. 37) is DENIED.
DATED this 18th day of April, 2017.
BY THE COURT:

Ted Stewart
United States District Judge

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