Case3:06-cv-01905-JSW Document395 Filed12/10/09 Page1 of 12
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`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
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`ROBERT JACOBSEN,
`Plaintiff,
`
` v.
`MATTHEW KATZER and KAMIND
`ASSOCIATES, INC.,
`Defendants.
` /
`
`No. C 06-01905 JSW
`ORDER GRANTING IN PART
`AND DENYING IN PART
`PLAINTIFF’S MOTIONS FOR
`SUMMARY JUDGMENT AND
`DENYING DEFENDANTS’
`MOTION FOR PARTIAL
`SUMMARY JUDGMENT
`
`Now before the Court is the motion for summary judgment filed by Plaintiff Robert
`Jacobsen and the motion for partial summary judgment filed by Defendants Matthew Katzer
`and Kamind Associates, Inc. Having considered the parties’ pleadings, the relevant legal
`authority, and having had the benefit of oral argument, the Court hereby GRANTS IN PART
`AND DENIES IN PART Plaintiff’s motion for summary judgment and DENIES Defendants’
`motion for partial summary judgment.
`
`BACKGROUND
`Matthew Katzer is the chief executive officer and chairman of the board of directors of
`Kamind Associates, Inc., a software company based in Portland, Oregon that develops software
`for model railroad enthusiasts. The Java Model Railroad Interface (“JMRI”) Project is an on-
`line, open source community that also develops model train software. Plaintiff, Robert
`Jacobsen, works for the Lawrence Berkeley National Laboratory and is a professor of physics at
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`Case3:06-cv-01905-JSW Document395 Filed12/10/09 Page2 of 12
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`A.
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`the university, as well as a model train hobbyist and a leading member of the JMRI Project.
`Defendants move for partial summary judgment on Plaintiff’s claim for copyright
`infringement and his claim for violation of the Digital Millennium Copyright Act and on all
`associated relief sought for these claims. Defendants do not challenge the cybersquatting claim.
`Plaintiff also moves for summary judgment on his copyright infringement and
`cybersquatting claims, as well as moving for judgment on three affirmative defenses to
`Defendants’ counterclaim for copyright infringement.
`The Court will address additional specific facts as required in the analysis.
`ANALYSIS
`Legal Standards Applicable to Motions for Summary Judgment.
`Summary judgment is proper when the pleadings, discovery, and affidavits show that
`there is “no genuine issue as to any material fact and that the moving party is entitled to
`judgment as a matter of law.” Fed. R. Civ. P. 56(c). The party moving for summary judgment
`bears the burden of identifying those portions of the pleadings, discovery, and affidavits that
`demonstrate the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S.
`317, 323 (1986). Once the moving party meets its initial burden, the nonmoving party must go
`beyond the pleadings and, by its own affidavits or discovery, “set forth specific facts showing
`that there is a genuine issue for trial.” Fed. R. Civ. P. 56(e). On an issue for which the
`opposing party will have the burden of proof at trial, the moving party need only point out “that
`there is an absence of evidence to support the nonmoving party’s case.” Id. Inferences drawn
`from the facts must be viewed in the light most favorable to the party opposing the motion.
`Masson v. New Yorker Magazine, 501 U.S. 496, 520 (1991).
`Actions arising under the Copyright Act must adhere to the same summary judgment
`standard as any other civil action. Shaw v. Lindheim, 919 F.2d 1353, 1358-59 (9th Cir. 1990).
`Accordingly, copyright claims can be resolved on summary judgment where there is no dispute
`of material fact. Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1472 (9th Cir. 1929).
`In particular, “[c]opyrightability is often resolved on summary judgment ... because very often
`no issues of material fact are in dispute and the only task for the court is to analyze the allegedly
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`copyrightable item in light of applicable copyright law.” Sem-Torq, Inc. v. K Mart Corp., 936
`F.2d 851, 853 (6th Cir. 1991) (citations omitted).
`B.
`Copyright Originality.
`The Constitution gives Congress the power “[t]o promote the Progress of Science ... by
`securing for limited Times to Authors ... the exclusive Right to their ... Writings.” U.S. Const.
`Art. 1, § 8, cl. 8. Accordingly, Congress has granted copyright protection to “original works of
`authorship,” 17 U.S.C. § 102(a), as well as to “compilations.” 17 U.S.C. § 103(a). The
`copyright compilation “extends only to the material contributed by the author of such work, as
`distinguished from the preexisting material employed in the work....” 17 U.S.C. § 103(b).
`Discoverable facts, like ideas, are not copyrightable. CDN Inc. v. Kapes, 197 F.3d 1256,
`1259 (9th Cir. 1999). But compilations of facts are copyrightable even when the underlying
`facts are not. Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 344 (1991).
`“Subject matter created by and original to the author merits copyright protection. Items not
`original to the author, i.e., not the product of his creativity, are facts and not copyrightable.”
`CDN, 197 F.3d at 1259. In order to warrant protection, compilations must contain a minimal
`amount of originality or creativity. Feist, 499 U.S. at 361. The requirement of originality, a
`prerequisite to any valid copyright, is “not particularly rigorous. Simply stated, original means
`not copied, and exhibiting a minimal amount of creativity.” Key Publications, Inc. v.
`Chinatown Today Publishing Enterprises, Inc., 945 F.2d 509, 512-13 (2d Cir. 1991) (citing 1
`Melville B. Nimmer & David Nimmer, Nimmer on Copyright, § 2.01 (1991)). The “requisite
`level of creativity is extremely low; even a slight amount will suffice. The vast majority of
`works make the grade quite easily , as they possess some creative spark, ‘no matter how crude,
`humble or obvious’ is might be.” Feist, 499 U.S. at 345 (quoting 1 M. Nimmer & D. Nimmer,
`Copyright § 1.08[C][1] (1990)).
`For compilations, “the originality requirement is not particularly stringent. A compiler
`may settle upon a selection or arrangement that others have used; novelty is not required.
`Originality requires only that the author make the selection or arrangement independently (i.e.,
`without copying that selection or arrangement from another work), and that it display some
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`minimal level of creativity. Presumably, the vast majority of compilations will pass this test,
`but not all will. There remains a narrow category of works in which the creative spark is utterly
`lacking or so trivial as to be nonexistent.” Id. at 358-59.
`In Feist, the Court found that the white page listings of telephone numbers in
`alphabetical order did not qualify for copyright protection as a compilation because it was found
`to be completely devoid of originality. Id. at 361. In Key Publications, however, the court
`found sufficient creativity to warrant copyright protection because the author of the yellow
`pages had excluded from the directory those businesses she did not think would remain open for
`very long. 945 F.2d at 513. Factual compilations which manifest choices as to selection and
`arrangement, made independently by the compiler and entailing a minimal degree of creativity,
`are “sufficiently original that Congress may protect such compilations through the copyright
`laws.” Feist, 499 U.S. at 1289 (citations omitted). “Thus, even a directory that contains
`absolutely no protectible written expression, only facts, meets the constitutional minimum for
`copyright protection if it features an original selection or arrangement.” See id. (citing Harper
`& Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 547 (1985)).
`The court in CDN found that the author’s estimates for the fair value of coins, which
`were then compiled into a price list, were sufficiently creative to warrant copyright protection.
`197 F.3d at 1260. In CCC Information Services, Inc. v. Maclean Hunter Market Reports, the
`Second Circuit found that the compilation of editors’ projections for the value of different kinds
`of used cars were not preexisting facts, but rather represented predictions by the editors of
`future prices, based on a multitude of data sources as well as professional judgment and
`expertise. 44 F.3d 61, 67 (2d Cir. 1994). Just as in CDN, because the compilation of data
`included the judgment and expertise of the authors in estimating value, the court found the
`requisite modicum of creativity sufficient to award the compilation copyright protection.
`In sum, copyright protections may be afforded compilations if there is a minimum level
`of creativity, either in the production of the data compiled or in the selection and arrangement of
`available, and otherwise noncopyrightable, data.
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`C.
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`Defendants’ Motion for Summary Judgment.
`1.
`Plaintiff’s Work is Copyrightable.
`Defendants move for summary judgment on Plaintiff’s claim for copyright infringement
`on the basis that the work which they admitted copying was not itself original to Plaintiff and
`therefore was not copyrightable. Also, Defendants argue that their mere literal copying of the
`Decoder Definition Text Files from the JMRI website does not constitute copyright
`infringement because the act of copying does not exceed the scope of the artistic license granted
`to users. The only pertinent license restrictions relate to the modification and distribution of the
`Decoder Definition Text Files. Because Defendants do not believe that Plaintiff’s copyrighted
`works actually distributed by Defendants contain the requisite originality, Defendants maintain
`that their wholesale copying followed by modification and distribution, without attribution,
`cannot constitute copyright infringement.
`However, there is undisputed evidence in the record indicating that Plaintiffs and the
`other members of the JMRI group invested a sufficient amount of creativity in the selection,
`ordering and arrangement of the data collected in the subject copied files. See, e.g., Declaration
`of Howard Penny in support of opposition, ¶¶ 1-11; Declaration of Robert Jacobsen in support
`of opposition, ¶¶ 1, 6-11, 15-20, 29-32; Declaration of Victoria K. Hall in support of opposition,
`Ex. D (Penny deposition) at 143:13-146:7; Declaration of Robin Becker in support of Plaintiff’s
`motion, ¶ 2, 5-7; Declaration of Jack Shall in support of Plaintiff’s motion, ¶¶ 1-3, 11-14.) The
`Court finds these selections and choices about arrangement reflect the minimal amount of
`creativity required to satisfy the low threshold for demonstrating originality. See, e.g., Key
`Publications, 945 F.2d at 513. Accordingly, Defendants’ motion for summary judgment on this
`basis is denied.1
`
`1 In addition, Defendants move for summary judgment on Plaintiff’s Digital
`Millennium Copyright Act (“DMCA”) claim on the sole basis that there is no underlying
`copyright infringement. As the Court has determined that there may be a copyright claim,
`Defendants’ motion for summary judgment of the DMCA claim is unavailing and is,
`accordingly, denied.
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`Copyright Damages Are Available to Plaintiff.
`2.
`In the alternative, Defendants argue that Plaintiff’s copyright claim should be dismissed
`because Plaintiff has not suffered any actual damages and is not entitled to statutory damages as
`a matter of law. Plaintiff concedes that he is not entitled to and does not seek statutory damages
`or attorneys’ fees under the Copyright Act. Defendants concede that Plaintiff has created a
`dispute of fact regarding the issue of irreparable harm by submission of Plaintiff’s declaration
`submitted in opposition to the pending motion. Therefore, the only issue remaining is whether
`there is a any contested issue regarding whether Plaintiff has suffered any monetary damages
`under the Copyright Act.
`Under the Copyright Act, a copyright owner is entitled to recover compensatory
`damages in the amount of actual damages suffered or the disgorgement of profits by the
`infringer attributable to the infringement. See 17 U.S.C. § 504(b). Although it is undisputed
`that Plaintiff distributed the copied work on the Internet at no cost, there is also evidence in the
`record attributing a monetary value for the actual work performed by the contributors to the
`JMRI project. (See Declaration of Victoria K. Hall in support of opposition, Ex. F (expert
`report of Michael A. Einhorn).)2 Because there are facts in the record which may establish a
`monetary damages figure, the Court finds Plaintiff has made a showing sufficient to establish
`the existence of a dispute of fact regarding the monetary value of Plaintiff’s work for purposes
`of his copyright claim. Accordingly, Defendants’ motion for summary judgment on this basis is
`denied.
`D.
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`Plaintiff’s Motion for Summary Judgment.
`1.
`Cybersquatting Claim.
`The Anticybersquatting Consumer Protection Act, an amendment to the Lanham Act,
`prohibits cyberquatting. Cybersquatting “occurs when a person other than the trademark holder
`
`2 Although Defendants object to the admission of this expert report because it is
`unsworn, the Court finds the later submission of Mr. Einhorn’s sworn declaration sufficient
`to overcome the objection. To the extent Defendants wish to move to strike the expert
`report, such a motion is not pending before this Court at this time. Regardless, the Court
`may assume at this procedural stage that there is some value for the expenditure of time
`invested in the JMRI Project and that it therefore has some monetary value.
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`registers the domain name of a well known trademark and then attempts to profit from this by
`either ransoming the domain name back to the trademark holder or by using the domain name to
`divert business from the trademark holder to the domain name holder.” Bosley Medical
`Institute, Inc. v. Bosley Medical Group, 403 F.3d 672, 680 (9th Cir. 2005) (quoting
`DaimlerChrysler v. The Net Inc., 388 F.3d 201, 204 (6th Cir. 2004)). The provision states that
`“[a] person shall be liable in a civil action by the owner of the mark ... if, without regard to the
`goods or services of the person, that person (i) has a bad faith intent to profit from that mark ...;
`and (ii) registers, traffics in, or uses domain name [that is confusingly similar to another’s mark
`or dilutes another’s famous mark].” 15 U.S.C. § 1125(d)(1)(A). A trademark owner trying to
`assert a claim for cybersquatting must establish “(1) it has a valid trademark entitled to
`protection; (2) its mark is distinctive or famous; (3) the defendant’s domain name is identical or
`confusingly similar to, or in the case of famous marks, dilutive of, the owner’s mark; and (4) the
`defendant used, registered, or trafficked in the domain name (5) with a bad faith intent to
`profit.” Bosley, 403 F.3d at 681.
`There is no dispute that Plaintiff has registered and owns the “DecoderPro” mark. (See
`Declaration of Robert Jacobsen in support of motion, ¶ 1, Ex. A.) The only remaining
`contention between the parties here is whether there is a factual dispute as to the bad faith intent
`to profit element of Plaintiff’s cybersquatting claim. The Court may consider various non-
`exclusive factors in determining whether the domain name holder acted in bad faith. See
`Sporty’s Farm LLC v. Sportsman’s Market, Inc., 202 F.3d 489, 498 (2d Cir. 2000). These
`factors include, for instance, the person’s prior use of the domain name in connection with the
`bona fide offering of any goods or services, the person’s intent to divert consumers from the
`mark owner’s online location, and the person’s offer to transfer, sell, or otherwise assign the
`domain name to the mark owner or any third party for financial gain without having used, or
`having an intent to use, the domain name in an bona fide offering of goods or services. Id. at
`498 n.12.
`Here, the undisputed facts establish that when he registered the name “decoderpro.com,”
`Katzer knew the mark referred to the product created by JMRI. (Declaration of Victoria K. Hall
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`in support of motion, Ex. H at 3.) It is also undisputed that Katzer warehoused the mark
`without using it and, in settling with a third party over a domain name dispute, tried to ensure
`that JMRI would not end up with the name. (Id., Ex. H at 7; Ex. J.) These undisputed facts are
`sufficient to establish the element of bad faith intent to profit. Defendants contention that, after
`their registration of the domain name, other people similarly registered marks in retaliation or to
`further their own business objective, is simply irrelevant and not currently before the Court.
`Accordingly, the Court GRANTS Plaintiff’s motion for summary judgment as to the
`cybersquatting claim.
`2.
`Copyright Infringement Claim.
`To prevail on his claim for copyright infringement, Plaintiff must show he owns a valid
`copyright and that Defendants reproduced protected elements of the copyrighted work. See
`Feist, 499 U.S. at 361. The uncontroverted evidence establishes that Plaintiff is the owner of
`the decoder definition files which are the subject of the copyright infringement claim.
`(Declaration of Robert Jacobsen in support of motion, Ex. B.) The evidence summarized by
`this Court with reference to Defendants’ motion establishes the originality, and therefore, the
`copyrightability, of the subject work. Again, the Court is unpersuaded that Plaintiff cannot
`prove damages. For the same reasons discussed supra, the copied files remain in the
`Defendants’ product as distributed and therefore constitute a basis for a claim for copyright
`infringement. Accordingly, the Court GRANTS Plaintiff’s motion for summary judgment on
`his copyright cause of action as to liability, but not as to damages.
`3.
`Plaintiff’s Affirmative Defenses.
`In November 2006, Defendant Matthew Katzer bought the rights to a reference manual
`produced by QS Industries, Inc. (“QSI”), a model train decoder chip maker. (Counterclaim at ¶
`14.) JMRI programmers, subject to a grant of an oral license to do so, included data from the
`reference manual in the JMRI files for QSI decoder chips. In February 2009, Defendants
`counterclaimed alleging copyright infringement against Plaintiff in the amount of $6 million for
`use of the data in the reference manual. (Id. at ¶¶ 16-26.)
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`Plaintiff argues that the undisputed facts demonstrate that the JMRI programmers had
`permission to reproduce and distribute the QSI material. Plaintiff contends that any limitation
`to the license, perhaps expressed in this litigation by QSI, was never communicated to Plaintiff
`or any of the programmers at JMRI. At oral argument, Defendants conceded that there is no
`evidence in the record that any limitation on the scope of the oral license granted by QSI was
`actually communicated to anyone at JMRI. Instead, Defendants contend that the permission
`could not have extended to the wholesale, literal incorporation of QSI’s descriptive phrases.
`Defendants contend that the scope of the license had to be limited in some manner, even if not
`actually communicated to Plaintiff. This argument is not actually supported by the facts in the
`record or by citation to persuasive legal authority.
`Second, Plaintiff contends that, even if QSI had not licensed the disputed work, the
`JMRI programmers’ use of the QSI material was fair. Plaintiff argues that the use was not for
`commercial purposes but more akin to non-profit educational use as the JMRI programmers
`transformed the data into “the foundation for an interactive computer program conferring
`substantial benefits on model railroaders” without cost. (Motion at 16.) The nature of the work
`also favors Plaintiff, as the relevant work is portions of a reference manual which were
`integrated the JMRI project in order help model railroaders program QSI chips, a benefit both to
`Plaintiff and to QSI. (Declaration of Victoria K. Hall, Ex. F (deposition of Gerry Pruss) at
`45:15-46:23, Ex. G (deposition of Fred Severson) at 62:1-15, 168:1-7.) The amount of
`substantiality of the portion used favors Plaintiff as the relative amount of data actually used is
`minimal. (Id. at ¶ 11, Ex. K.)
`Lastly, Plaintiff argues that Defendants’ counterclaim is barred by the doctrine of laches.
`Laches is an equitable defense that precludes liability for a plaintiff who “with full knowledge
`of the facts, acquiesces in a transaction and sleeps upon his rights.” Danjaq LLC v. Sony Corp.,
`263 F.3d 942, 950 (9th Cir. 2001) (citation omitted). Plaintiff must establish both that
`Defendants unreasonably delayed bringing suit and that the delay caused Plaintiff to suffer
`prejudice. See Couveau v. American Airlines, Inc., 218 F.3d 1078, 1083 (9th Cir. 2000).
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`The undisputed facts establish that Defendants bought the rights to the QSI reference
`manuals in November 2006 and waited 27 months to file their counterclaim. The record also
`conclusively establishes that no one informed Plaintiff of the assignment of rights, nor did they
`object to his continued use of the data. There is no evidence that QSI has ever requested that
`Plaintiff or the JMRI project cease using its materials. Plaintiff states that had QSI objected to
`the use of the QSI material, his project would have ceased to use it, thereby not incurring any
`damages. (Declaration of Robert Jacobsen at ¶ 52, Declaration of Victoria K. Hall, Ex. D
`(deposition of Michael Mosher) at 65:11-19, Ex. E (deposition of Howard G. Penny) at 128:12-
`14.) Based on these uncontested facts, the Court finds that Defendants’ conduct amounts to a
`litigation tactic barred by the equitable doctrine of laches. Accordingly, the Court GRANTS
`Plaintiff’s motion for summary judgment as to Defendants’ counterclaim for infringement.
`4.
`Digital Millennium Copyright Act Claim.
`Plaintiff alleges that the information contained in the JMRI Project Decoder Definition
`Files constituted “copyright management information” within the meaning of the Digital
`Millennium Copyright Act. Plaintiff further alleges that by removing the information and
`making copies of the files, Defendants violated 17 U.S.C. § 1202(b), which protects the
`integrity of copyright management information.
`Under the statute, the term copyright management information (“CMI”) means “any of
`the following information conveyed in connection with copies ... of a work ..., including digital
`form,” including “the name of, and other identifying information about the author of the work,
`... the copyright owner of the work, ... [and other] information identifying the work.” 17 U.S.C.
`§ 1202(c). In IQ Group v. Wiesner Publishing, Inc., the court, at the summary judgment stage,
`determined after a lengthy review of the legislative history of the DMCA that the statute should
`be construed to protect CMI performed by the technological measures of automated systems.
`409 F. Supp. 2d 587, 597 (D. N.J. 2006). In McClatchey v. The Associated Press, because the
`plaintiff had used a computer software program to print her title, name and copyright notice on
`copies of her photograph, the district court determined that this technological process came
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`within the term CMI as defined in section 1202(c). 2007 WL 776103, *5 (W.D. Pa. March 9,
`2007).
`The information Plaintiff contends consists of copyright management information in his
`complaint is the “author’s name, a title, a reference to the license and where to find the license,
`a copyright notice, and the copyright owner.” (Second Amended Complaint, ¶ 479.) Plaintiff
`also alleges that he used a software script to automate adding copyright notices and information
`regarding the license and uploaded the files on the Internet through SourceForge.net, an open
`source incubator website. (Id., ¶¶ 267-68, 480.) Plaintiff contends that Defendants downloaded
`the files and removed the names of the authors and copyright holder, title, reference to license,
`where to find the license and the copyright notices, and instead, renamed the files and referred
`to their own copyright notice and named themselves as author and copyright owner. (Id., ¶¶
`271-76; 289-291.)
`Based on the allegations in the complaint, the Court finds that there has been some
`technological process employed to protect the author’s name, a title, a reference to the license
`and where to find the license, a copyright notice, and the copyright owner of Plaintiff’s work.
`Further, there is no dispute that Defendants employed a tool to translate the JMRI files to a
`format for their own use without copying this attribution information. Therefore, these
`elements of the DMCA claim are established in Plaintiff’s favor. However, as Plaintiff
`concedes, there remain disputed and therefore triable issues of fact regarding Defendants’
`knowledge and intent. Accordingly, the Court GRANTS IN PART AND DENIES IN PART
`Plaintiff’s motion for summary judgment as to the DMCA claim.
`E.
`Scheduling.
`At the conclusion of the oral argument on these motions, counsel for both parties agreed
`that, upon receipt of the order resolving the motions, they would meet and confer and propose a
`mutually-agreed upon pretrial and trial schedule. The Court HEREBY VACATES the current
`pretrial and trial schedule and ORDERS the parties to meet and confer and to submit a joint
`proposal by no later than December 18, 2009. Considering the current posture of the case, the
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`parties’ joint proposal shall also include a date by which the parties agree to proceed to a further
`settlement conference before Magistrate Judge LaPorte.
`CONCLUSION
`For the foregoing reasons, the Court GRANTS IN PART AND DENIES IN PART
`Plaintiff’s motion for summary judgment and DENIES Defendants’ motion for partial summary
`judgment.
`IT IS SO ORDERED.
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`Dated: December 10, 2009
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`JEFFREY S. WHITE
`UNITED STATES DISTRICT JUDGE
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`For the Northern District of California
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`United States District Court
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