Case 8:06-cv-00522-DKC Document 41 Filed 11/30/06 Page 1 of 24
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MARYLAND
`:
`:
`: Civil Action No. DKC 2006-0522
`
`ADVANCE MAGAZINE
` PUBLISHERS INC.
`
`v.
`
` :
`
`DAVID LEACH
`
`
`:
`MEMORANDUM OPINION
`Presently pending and ready for resolution in this copyright
`and trademark infringement case are (1) Plaintiff’s motion for
`partial summary judgment on count I, (2) Defendant’s motion for
`partial summary judgment on counts III, IV, and V, (3) Defendant’s
`motion to extend time for discovery and to extend time to file, (4)
`Defendant’s motion to dismiss, and (5) Defendant’s motion for a
`writ of mandamus. The issues are fully briefed and the court now
`rules pursuant to Local Rule 105.6, no hearing being deemed
`necessary. For the reasons that follow, Plaintiff’s motion for
`partial summary judgment will be granted. Defendant’s motion to
`extend time to file will be denied as moot. Defendant’s motions
`for partial summary judgment, to extend time for discovery, to
`dismiss, and for a writ of mandamus will be denied.
`I. Factual Background
`All facts are uncontroverted. Plaintiff Advance Magazine
`Publishers, Inc., is the owner on record with the United States
`Copyright Office of more than 500 book-length stories, published in
`the 1930s and 1940s, in the pulp fiction serial magazines, The
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MARYLAND
`:
`:
`: Civil Action No. DKC 2006-0522
`
`ADVANCE MAGAZINE
` PUBLISHERS INC.
`
`v.
`
` :
`
`DAVID LEACH
`
`
`:
`MEMORANDUM OPINION
`Presently pending and ready for resolution in this copyright
`and trademark infringement case are (1) Plaintiff’s motion for
`partial summary judgment on count I, (2) Defendant’s motion for
`partial summary judgment on counts III, IV, and V, (3) Defendant’s
`motion to extend time for discovery and to extend time to file, (4)
`Defendant’s motion to dismiss, and (5) Defendant’s motion for a
`writ of mandamus. The issues are fully briefed and the court now
`rules pursuant to Local Rule 105.6, no hearing being deemed
`necessary. For the reasons that follow, Plaintiff’s motion for
`partial summary judgment will be granted. Defendant’s motion to
`extend time to file will be denied as moot. Defendant’s motions
`for partial summary judgment, to extend time for discovery, to
`dismiss, and for a writ of mandamus will be denied.
`I. Factual Background
`All facts are uncontroverted. Plaintiff Advance Magazine
`Publishers, Inc., is the owner on record with the United States
`Copyright Office of more than 500 book-length stories, published in
`the 1930s and 1940s, in the pulp fiction serial magazines, The
`
`
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`Case 8:06-cv-00522-DKC Document 41 Filed 11/30/06 Page 2 of 24
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`Shadow, Doc Savage, and The Avenger, as well as in similarly titled
`magazines (“publications”).1 (Paper 1, Exs. A, D, F; paper 8,
`Birenz Decl. ¶¶ 4, 5).
`Defendant David Leach, d/b/a David Moynihan, d/b/a Disruptive
`Publishing, operates two websites, Blackmask.com and Smartset.net,
`through which he displays or offers for distribution electronic
`copies and reprints of Plaintiff’s publications. (Paper 8, Birenz
`Decl. ¶ 13). Defendant operates his business by scanning literary
`works into electronic form and making them available to the public
`in a variety of formats, including MS-Reader, Adobe Acrobat, and
`Rocket eBook. (Paper 5 at 4). Defendant’s customers may download
`advertiser-supported electronic copies of works directly from his
`websites, purchase by mail CD-ROMs and DVD-ROMs containing
`compilations of works, or purchase through online booksellers such
`as Amazon.com and Barnesandnoble.com, reprints of literary works
`made by Defendant. Defendant began selling copies of Plaintiff’s
`publications in 2000. (Paper 5 at 5; paper 8 at 5-6).
`Plaintiff submitted extensive exhibits documenting its chain
`of title to the publications, which will be summarized briefly.
`Between 1931 and 1949, Street & Smith published The Shadow, Doc
`
`1 The number of works at issue is unclear. The parties have
`described the publications as numbering “more than 500,” “506,” and
`“546” in various documents. Any and all references to “The Shadow”
`include the publications The Shadow: A Detective Magazine, The
`Shadow: A Detective Monthly, The Shadow Detective Monthly, The
`Shadow Magazine, and The Shadow Mystery; and any and all references
`to “Doc Savage” include Doc Savage Magazine. (Paper 1 at 4, 7).
`2
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`Savage, and The Avenger as works for hire written by Walter Gibson
`(pen name Maxwell Grant), Lester Dent, and Paul Ernst (pen name
`Kenneth Robeson), respectively. (Paper 1 at ¶¶ 15, 26, 35; paper
`8, Birenz Decl. ¶ 4). On December 19, 1961, Street & Smith merged
`into Condé Nast, transferring all “estate, property, rights,
`privileges and Franchises.” (Paper 1 at ¶ 44; paper 8, Birenz
`Decl. ¶ 8). The merger document was filed with the United States
`Patent and Trademark Office. On September 22, 1988, Condé Nast
`merged into Plaintiff. At the time of the merger, Plaintiff
`acquired all rights previously owned by Condé Nast. (Paper 8,
`Birenz Decl. ¶¶ 8, 9). Plaintiff has registered additional
`copyrighted materials and trademarks related to the publications
`and has properly renewed all its registrations. (Paper 1, Exs. J,
`K, L).
`II. Procedural Background
`On February 28, 2006, Plaintiff filed a six count complaint
`against Defendant alleging: count I, copyright infringement under
`the Copyright Act of 1976, 17 U.S.C. §§ 106, 501, et seq.,
`(“Copyright Act”); count II, copyright infringement under the
`Digital Millennium Copyright Act, 17 U.S.C. § 1202, (“DMCA”); count
`III, trademark infringement under the Lanham Act, 15 U.S.C. § 1114;
`count IV, trademark infringement and unfair competition under the
`Lanham Act, 15 U.S.C. § 1125(a); count V, trademark dilution under
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`the Lanham Act, 15 U.S.C. § 1125(c); and count VI, trademark
`infringement under Maryland common law. (Paper 1).
`On March 22, 2006, Defendant filed an answer defending his
`actions by alleging that Plaintiff is not the true owner of the
`copyrights at issue because Defendant had acquired the rights
`through adverse possession.2 (Paper 5 at 1). The answer also
`included a copy of a letter Defendant wrote to the United States
`Copyright Office, requesting a recordation of transfer of ownership
`of 506 of Plaintiff’s publications based on the doctrine of adverse
`possession. (Paper 5, Ex. 1). The copyright office rejected
`Defendant’s petition because he did not pay the proper fee.
`On May 3, 2006, pursuant to the DMCA, Plaintiff sent a notice
`to the Internet service provider hosting Defendant’s websites, PEER
`1 Network, informing PEER 1 that Defendant’s websites contained
`infringing copies of Plaintiff’s publications. The following day,
`PEER 1 disabled access to Defendant’s websites.
`On May 4, 2006, Defendant resubmitted his letter to the
`copyright office claiming a transfer of rights through adverse
`possession. On June 28, 2006, the copyright office responded to
`Defendant’s letter, indicating that the copyright office does not
`
`2 In the alternative, Defendant initially contended that
`Plaintiff’s rights to Doc Savage had been acquired by unclean
`hands, and were therefore void. (Paper 5 at 1). However, in
`deposition testimony Defendant testified that he had “dropped” the
`defense of unclean hands. (Paper 20, Ex. 2).
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`consider the doctrine of adverse possession applicable to
`intellectual property. (Paper 20, Ex. 1).
`Plaintiff seeks partial summary judgment on its copyright
`infringement claim (count I). (Paper 8). Defendant seeks partial
`summary judgment on counts III, IV, and V. (Paper 28). Defendant
`also filed an untitled motion, (paper 34). While it is not clear
`precisely what relief is sought by Paper 34, the court will
`construe it as a request to extend the period for discovery and to
`extend the time for Defendant to file a motion to dismiss.
`Defendant additionally filed a separate motion to dismiss (paper
`38) and a motion requesting a writ of mandamus ordering PEER 1 to
`restore access to the server hosting Defendant’s websites for a
`limited period to allow Defendant to remove the content (paper 39).
`III. Motions for Summary Judgment
`A. Standard of Review
`
`It is well established that a motion for summary judgment will
`be granted only if there exists no genuine issue as to any material
`fact and the moving party is entitled to judgment as a matter of
`law. See Fed.R.Civ.P. 56(c); Anderson v. Liberty Lobby, Inc., 477
`U.S. 242, 250 (1986); Celotex Corp. v. Catrett, 477 U.S. 317, 322
`(1986). In other words, if there clearly exist factual issues
`“that properly can be resolved only by a finder of fact because
`they may reasonably be resolved in favor of either party,” then
`summary judgment is inappropriate. Anderson, 477 U.S. at 250; see
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`also Pulliam Inv. Co. v. Cameo Props., 810 F.2d 1282, 1286 (4th Cir.
`1987); Morrison v. Nissan Motor Co., 601 F.2d 139, 141 (4th Cir.
`1979). The moving party bears the burden of showing that there is
`no genuine issue as to any material fact and that he is entitled to
`judgment as a matter of law. See Fed.R.Civ.P. 56(c); Catawba
`Indian Tribe of S.C. v. South Carolina, 978 F.2d 1334, 1339 (4th
`Cir. 1992), cert. denied, 507 U.S. 972 (1993).
`
`When ruling on a motion for summary judgment, the court must
`construe the facts alleged in the light most favorable to the party
`opposing the motion. See United States v. Diebold, 369 U.S. 654,
`655 (1962); Gill v. Rollins Protective Servs. Co., 773 F.2d 592,
`595 (4th Cir. 1985). A party who bears the burden of proof on a
`particular claim must factually support each element of his or her
`claim. “[A] complete failure of proof concerning an essential
`element . . . necessarily renders all other facts immaterial.”
`Celotex Corp., 477 U.S. at 323. Thus, on those issues on which the
`nonmoving party will have the burden of proof, it is his or her
`responsibility to confront the motion for summary judgment with an
`affidavit or other similar evidence in order to show the existence
`of a genuine issue for trial. See Anderson, 477 U.S. at 256;
`Celotex Corp., 477 U.S. at 324. However, “[a] mere scintilla of
`evidence in support of the nonmovant’s position will not defeat a
`motion for summary judgment.” Detrick v. Panalpina, Inc., 108 F.3d
`529, 536 (4th Cir.), cert. denied, 522 U.S. 810 (1997). There must
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`be “sufficient evidence favoring the nonmoving party for a jury to
`return a verdict for that party. If the evidence is merely
`colorable, or is not significantly probative, summary judgment may
`be granted.” Anderson, 477 U.S. at 249-50 (citations omitted).
`B. Copyright Claim (count I)
`In its motion for partial summary judgment on count I,
`Plaintiff requests that the court enter a judgment of liability
`against Defendant for copyright infringement, with the amount of
`damages, costs, and attorney’s fees to be determined separately.
`Plaintiff seeks to enjoin Defendant immediately and permanently
`from reproducing, displaying, or distributing any copies of
`Plaintiff’s publications. Plaintiff further requests that the
`court order Defendant to provide to Plaintiff’s attorney all
`infringing copies of its publications in his possession, custody,
`or control, and all publications used to make the infringing copies
`that are in his possession, custody, or control. (Paper 8 at 3-4).
`
`Plaintiff contends that by scanning into electronic form,
`displaying, and selling or otherwise making available to the
`public, more than 500 of Plaintiff’s publications, Defendant has
`infringed its copyrights in those publications under 17 U.S.C. §
`501(a).
`“[T]he Copyright Act grants the copyright holder ‘exclusive’
`rights to use and to authorize the use of his work in five
`qualified ways,” namely, (1) to reproduce the work, (2) to prepare
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`derivative works, (3) to distribute copies of the work to the
`public, (4) to perform the work publicly, and (5) to display the
`work publicly. Sony Corp. v. Universal City Studios, Inc., 464
`U.S. 417, 432-33 (1984); 17 U.S.C. § 106. The Copyright Act
`provides that “[a]nyone who violates any of the exclusive rights of
`the copyright owner . . . is an infringer of the copyright.” 17
`U.S.C. § 501. Stated at a general level, “[t]o establish
`infringement, two elements must be proven: (1) ownership of a valid
`copyright, and (2) copying of constituent elements of the work that
`are original.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499
`U.S. 340, 361 (1991). “A direct infringer has thus been
`characterized as one who trespasses into the copyright owner’s
`exclusive domain established in § 106, subject to the limitations
`of §§ 107 through 118.” CoStar Group, Inc. v. LoopNet, Inc., 373
`F.3d 544, 549 (4th Cir. 2004) (quoting Sony, 464 U.S. at 433)
`(internal quotations omitted).
`1. Adverse Possession
`Defendant asserts that his actions cannot constitute
`
`infringing activity because he has acquired the copyrights to
`Plaintiff’s publications through the doctrine of adverse
`possession. Defendant alleges that he has maintained a publicly
`available website for nearly 8 years, which is open and notorious,
`hostile to the interests of the copyright owner, continuous, and
`under claim of right.
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`Defendant makes a rather novel argument. No court has decided
`whether the doctrine of adverse possession applies to intellectual
`property since the revision of the Copyright Act in 1976.
`Plaintiff offers two legal arguments for why this court should hold
`that the doctrine of adverse possession does not apply to
`copyright: (1) adverse possession is a common law doctrine and as
`such is preempted by the federal Copyright Act, and (2) adverse
`possession cannot constitute a transfer “by operation of law” under
`the Copyright Act because it is not a voluntary act. (Paper 8 at
`14-26).
`a. Federal Preemption
`
`Under the Supremacy Clause, a state law that interferes with
`or is contrary to federal law is invalid. U.S. CONST. Art. 6, cl.
`2. Even in its traditional application to realty, the doctrine of
`adverse possession is strictly a state law defense and does not
`apply to rights created by federal law, such as Native American
`title to lands. See Catawba Indian Tribe of S.C. v. South
`Carolina, 865 F.2d 1444, 1448 (4th Cir. 1989) (“[e]xcept where
`Congress provides otherwise, claims based on Indian title are not
`subject to state law defenses such as . . . adverse possession”).
`
`Defendant seeks to extend the state law doctrine of adverse
`possession to federal copyrights. The United States Constitution
`vests Congress with the exclusive authority to regulate copyrights
`and patents. U.S. CONST. Art. I, § 8, cl. 8. Congress amended the
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`Copyright Act in 1976 to clarify the relationship between the Act
`and state law:
`On and after January 1, 1978, all legal or
`equitable rights that are equivalent to any of
`the exclusive rights within the general scope
`of copyright as specified by section 106 in
`works of authorship that are fixed in a
`tangible medium of expression and come within
`the subject matter of copyright as specified
`by sections 102 and 103, whether created
`before or after that date and whether
`published or unpublished, are governed
`exclusively by this title. Thereafter, no
`person is entitled to any such right or
`equivalent right in any such work under the
`common law or statutes of any State.
`17 U.S.C. § 301(a). “Thus, § 301(a) preempts state law claims if
`the rights granted under state law are equivalent to any exclusive
`rights within the scope of federal copyright as set out in 17
`U.S.C. § 106.” Rosciszewski v. Arete Assocs., Inc., 1 F.3d 225,
`229 (4th Cir. 1993). Application of the doctrine of adverse
`possession would transfer all of the original owner’s rights to the
`adverse possessor. Therefore, the rights that would be acquired by
`adverse possession of a copyright would be equivalent to the rights
`set out in § 106 of the Copyright Act. Section 301(a) expressly
`preempts any state law granting equivalent rights. Thus, the state
`common law doctrine of adverse possession is preempted by the
`Copyright Act and cannot divest Plaintiff of its federal copyrights
`in The Shadow, Doc Savage, and The Avenger.
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`b. Adverse Possession as Transfer by Operation of Law
`In the alternative, Defendant attempts to circumvent the
`federal preemption issue by maneuvering within the Copyright Act to
`argue that there has been a transfer of Plaintiff’s copyrights to
`him by “operation of law” through the doctrine of adverse
`possession. (Paper 5, Ex. 1). Thus, he is not asserting adverse
`possession as a state law doctrine, but rather asking the court to
`construe “operation of law” to encompass the principles of adverse
`possession. This argument is also misguided.
` The Copyright Act does allow the transfer of copyrights by
`“operation of law” as Defendant suggests. See 17 U.S.C. §
`201(d)(1). However, transfers by operation of law are expressly
`limited to voluntary transfers, except in bankruptcy proceedings.
`When an individual author’s ownership of a
`copyright, or of any of the exclusive rights
`under a copyright, has not previously been
`transferred voluntarily by that individual
`author, no action by any governmental body or
`other official or organization purporting to
`seize, expropriate, transfer, or exercise
`rights of ownership with respect to the
`copyright, or any of the exclusive rights
`under a copyright, shall be given effect under
`this title, except as provided under title 11.
`Id. § 201(e) (emphasis added). By its nature, adverse possession
`requires involuntariness, or lack of consent, on the part of the
`original owner.3 Defendant’s claim to have effected the transfer
`
`3 Because no federal law of adverse possession exists, the
`court must look to state law to interpret the elements of adverse
`(continued...)
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`by operation of law through adverse possession amounts to a claim
`for an involuntary transfer of rights, which is barred by 17 U.S.C.
`§ 201(e).
`Defendant essentially contends that his conduct over time
`somehow estops Plaintiff from complaining about copyright
`infringement. Any argument that Plaintiff’s claim is time-barred
`must be rejected. The limitations period for bringing a copyright
`infringement claim is three years after the claim accrues. 17
`U.S.C. § 507(b). A claim accrues when “one has knowledge of a
`violation or is chargeable with such knowledge.” Hotaling v.
`Church of Jesus Christ of Latter-Day Saints, 118 F.3d 199, 202 (4th
`Cir. 1997) (internal quotation marks and citations omitted).
`Because each sale or copy of a work is a separate act of
`infringement, a “party does not waive the right to sue for
`[copyright] infringements that accrue within three years of filing
`
`3(...continued)
`possession. Defendant is a citizen of and operates his business
`from Maryland, so the court will look to Maryland law. The
`familiar elements of adverse possession are that, to be adverse,
`possession must be actual, open, notorious, exclusive, hostile,
`under claim of title or ownership, and continuous or uninterrupted
`for the statutory period of twenty years. Banks v. Pusey, 393 Md.
`688, 709 (2006). “It has long been held by [the Court of Appeals
`of Maryland] that where the original entry and subsequent occupancy
`of land was under a contract, or with the consent or permission of
`the owner, the possession would not be hostile or adverse,” and
`thus cannot meet the requirements for adverse possession. Banks,
`393 Md. at 710 (emphasis added). In short, if a would-be adverse
`possessor has “the consent or permission of the owner” he cannot
`meet the hostility and adversity requirements of adverse
`possession.
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`by not asserting related claims that accrued beyond three years.”
`Id. Defendant was displaying infringing copies of Plaintiff’s work
`until PEER 1 disabled access to his websites, thus, the last act of
`infringement occurred as recently as May, 2006. Plaintiff’s
`complaint was brought within the three year statute of limitations.
`Furthermore, a court may not apply the doctrine of laches to
`shorten the statutory limitations period established by Congress
`for claims brought under the Copyright Act, 17 U.S.C. § 507(b).
`Lyons Partnership, L.P. v. Morris Costumes, Inc., 243 F.3d 789, 798
`(4th Cir. 2001).
`Thus, Defendant’s argument that he has acquired the copyrights
`to The Shadow, Doc Savage, and The Avenger through adverse
`possession fails as a matter of law. Plaintiff has produced
`uncontroverted evidence that it owns the copyrights to the
`publications.
`2. Infringing Activity
`“Section 106 of the Copyright Act confers a bundle of
`exclusive rights to the owner of the copyright,” including the
`rights to reproduce, create derivative works, distribute, perform,
`and display the copyrighted work. Harper & Row, Publishers, Inc.
`v. Nation Enter., 471 U.S. 539, 546 (1985); 17 U.S.C. § 106.
`Plaintiff alleges that Defendant has violated its exclusive rights
`of reproduction, distribution, and display in the publications
`Defendant makes available on his websites.
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`Plaintiff contends that Defendant violated its exclusive right
`to reproduce the publications by scanning into electronic form the
`text, original illustrations, and cover art of its publications.
`(Paper 8 at 13). It is well-established that photocopying a
`copyrighted work without the owner’s permission infringes the
`owner’s right of reproduction. See Princeton Univ. v. Michigan
`Document Svcs., 99 F.3d 1381 (6th Cir. 1996), cert. denied, 520
`U.S. 1156 (1997). Although Defendant used a scanner to create a
`digital copy of a work, rather than a photocopier to print a
`physical copy, the methods of copying are equivalent and they are
`both infringing.4 A digital copy made without the owner’s
`permission
`is
`copyright
`infringement.
`
`e.g.,
`See,
`Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913
`(2005) (holding companies contributorily liable for copyright
`infringement for facilitating users’ transmissions of unauthorized
`digital copies of copyrighted works). Thus, Defendant has
`infringed Plaintiff’s exclusive right to reproduce its
`publications.
`Furthermore, Plaintiff alleges that Defendant violated its
`exclusive right to display its publications by making them
`available for the public to view as HTML pages on his websites.
`(Paper 8 at 13). To infringe an owner’s right to display, a person
`
`4 Although Defendant does, in fact, print and sell paper
`copies of Plaintiff’s work, Plaintiff asserts that this violates
`its right to distribution rather than its right to reproduction.
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`must (1) display a copy of the work (2) to the public. 17 U.S.C.
`§ 106(5). “Display” covers any showing of a copy of the work,
`“either directly or by means of a film, slide, television image or
`any other device or process.” 17 U.S.C. § 101. To display
`publicly means “to transmit or otherwise communicate a . . .
`display of the work . . . to the public, by means of any device or
`process, whether the members of the public capable of receiving the
`performance or display receive it in the same place or in separate
`places and at the same time or at different times.” 17 U.S.C. §
`101. Displaying a copy of a work on the Internet, especially on a
`commercial site, falls squarely within the definition of “public
`display.” Defendant’s posting of Plaintiff’s publications on his
`websites infringe Plaintiff’s right of display.
`Finally, Plaintiff claims that Defendant violated its
`exclusive right to distribute its publications by making them
`available online as “advertiser-supported downloads . . . as well
`as by selling his reproductions on CD-ROM compilations, DVD-ROM
`compilations and print books or ‘reprints.’” (Paper 8 at 13). In
`a case that bears directly on this issue, the Supreme Court held
`that two online database companies violated six freelance authors’
`rights of distribution by making copies of their articles available
`to the databases’ users without the authors’ consent. New York
`Times Co., Inc. v. Tasini, 533 U.S. 483, 488 (2001). Defendant
`operates what is essentially an online database of literary works,
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`and by making available unauthorized copies of Plaintiff’s
`publications, he has infringed its right to distribution.
`3. Requested Relief
`Accordingly, Plaintiff has established as a matter of law that
`Defendant has infringed Plaintiff’s copyrights, specifically its
`rights of reproduction, display, and distribution. Plaintiff
`requests immediate relief in the form of a permanent injunction
`against Defendant and mandamus ordering Defendant to surrender all
`of Plaintiff’s publications and infringing copies of Plaintiff’s
`publications within his possession, custody, or control. (Paper 8
`at 3-4).
`At this stage of litigation, the court finds it appropriate to
`issue a preliminary injunction against Defendant, barring him from
`reproducing, displaying, or distributing any copies of Plaintiff’s
`publications, in any form or format, pending a final determination
`of all issues. The scope and form of a permanent injunction will
`be resolved at that time.
`Under 17 U.S.C. § 502(a), a court may “grant temporary and
`final injunctions on such terms as it may deem reasonable to
`prevent or restrain infringement of a copyright.” The United
`States Court of Appeals for the Fourth Circuit has set out a
`balancing test to be considered by the court in deciding on a
`motion for preliminary injunction: (1) the plaintiff’s likelihood
`of success on the merits of the underlying dispute; (2) the
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`possibility of irreparable harm to the plaintiff if preliminary
`relief is denied; (3) the harm to the defendant if an injunction is
`issued; and (4) the public interest. See Blackwelder Furniture Co.
`v. Seilig Mfg. Co., 550 F.2d 189, 196 (4th Cir. 1977). The decision
`to grant or deny a preliminary injunction depends upon a “flexible
`interplay” among all the factors considered. Id. The irreparable
`harm to the plaintiff and the harm to the defendant are the two
`most important factors. In re Microsoft Corp. Antitrust
`Litigation, 333 F.3d 517, 526 (4th Cir. 2003) (internal quotation
`marks omitted).
`If a plaintiff establishes a prima facie claim of copyright
`infringement, the district court may presume that it could show
`both probable likelihood of success on the merits and irreparable
`harm, for purposes of granting a preliminary injunction. Serv. &
`Training, Inc. v. Data Gen. Corp., 963 F.2d 680, 690 (4th Cir.
`1992). Here, Plaintiff has gone beyond establishing a prima facie
`case of copyright infringement and shown actual infringement,
`satisfying the first two factors of the balancing test. The third
`factor in the balancing test is to weigh the harm to Defendant if
`the injunction is issued. Defendant cannot claim a cognizable harm
`in being prevented from making a profit through infringing
`activity, thus this factor weighs in favor of Plaintiff. Finally,
`the “public interest is the interest in upholding copyright
`protections.” Autoskill, Inc. v. Nat’l Educ. Support Sys., Inc.,
`
`17
`
`
`
`Case 8:06-cv-00522-DKC Document 41 Filed 11/30/06 Page 18 of 24
`
`994 F.2d 1476, 1499 (10th Cir. 1993). “Since Congress has elected
`to grant certain exclusive rights to the owner of a copyright in a
`protected work, it is virtually axiomatic that the public interest
`can only be served by upholding copyright protections and,
`correspondingly, preventing the misappropriation of the skills,
`creative energies, and resources which are invested in the
`protected work.” Apple Computer, Inc. v. Franklin Computer Corp.,
`714 F.2d 1240, 1254-55 (3rd Cir. 1983). The balancing test tips
`decidedly in Plaintiff’s favor and the court will grant a
`preliminary injunction against Defendant that he is not to
`reproduce, display or distribute any copies of Plaintiff’s
`publications in any way.
`In later determining the terms of any permanent injunction,
`the court will consider the four factors laid out by the Supreme
`Court:
`
`According to well-established principles of
`equity, a plaintiff seeking a permanent
`injunction must satisfy a four-factor test
`before a court may grant such relief. A
`plaintiff must demonstrate: (1) that it has
`suffered an irreparable injury; (2) that
`remedies available at law, such as monetary
`damages, are inadequate to compensate for that
`injury; (3) that, considering the balance of
`hardships between the plaintiff and defendant,
`a remedy in equity is warranted; and (4) that
`the public interest would not be disserved by
`a permanent injunction.
`eBay, Inc. v. MercExchange, LLC, --- U.S. ----, ----, 126 S.Ct.
`1837, 1839, 164 L.Ed.2d 641 (2006).
`
`18
`
`
`
`Case 8:06-cv-00522-DKC Document 41 Filed 11/30/06 Page 19 of 24
`
`Additionally, Plaintiff requests that the court impound all of
`Defendant’s infringing copies of Plaintiff’s publications, as well
`as the original publications used to make those infringing copies.
`(a) At any time while an action under this
`title is pending, the court may order the
`impounding, on such terms as it may deem
`reasonable, of all copies . . . claimed to
`have been made or used in violation of the
`copyright owner’s exclusive rights, and of all
`plates, molds, matrices, masters, tapes, film
`negatives, or other articles by means of which
`such copies . . . may be reproduced.
`17 U.S.C. § 503. This is a reasonable request and the court will
`order Defendant to provide to Plaintiff’s attorney all of
`Plaintiff’s publications, and infringing reproductions of those
`publications, that are in his possession, custody, or control.
`These items will be held by Plaintiff’s attorney until a final
`judgment is issued in this case.
`C. Trademark Claims
`Defendant moves for summary judgment on all trademark
`infringement claims relating to The Shadow and Doc Savage.5
`Defendant argues that because Plaintiff has abandoned the marks, it
`no longer has rights to the marks, and thus cannot assert a cause
`of action for trademark infringement.
`
`5 Plaintiff did not file a formal response to the motion.
`Instead, it objected to the filing of the motion as being out of
`time. Defendant’s motion was filed well after the deadline set,
`and he has not been granted an extension. For that reason, as well
`as those set forth in the body of this Memorandum, the motion will
`be denied.
`
`19
`
`
`
`Case 8:06-cv-00522-DKC Document 41 Filed 11/30/06 Page 20 of 24
`
`Under the Lanham Act, a trademark is abandoned when “its use
`has been discontinued with intent not to resume such use.” 15
`U.S.C. § 1127. Abandonment is an affirmative defense. See United
`States v. Farmer, 370 F.3d 435, 441 n. 2 (4th Cir. 2004). Thus, a
`party claiming that a mark has been abandoned must show “non-use of
`the name by the legal owner and no intent by that person or entity
`to resume use in the reasonably foreseeable future.” Emergency
`One, Inc. v. Am. FireEagle, Ltd., 228 F.3d 531, 535 (4th Cir. 2000)
`(quoting Stetson v. Howard D. Wolf & Assocs., 955 F.2d 847, 850 (2nd
`Cir. 1992)). Non-use for three consecutive years alone constitutes
`prima facie evidence of abandonment. See 15 U.S.C. § 1127. Proof
`of three consecutive years of non-use thus creates a presumption of
`intent not to resume use. See Cerveceria Centroamericana, S.A. v.
`Cerveceria India, Inc., 892 F.2d 1021, 1025-26 (Fed.Cir. 1989).
`“Once the presumption is triggered, the legal owner of the mark has
`the burden of producing evidence of either actual use during the
`relevant period or intent to resume use.” Emergency One, 228 F.3d
`at 536; see also Cerveceria Centroamericana, 892 F.2d at 1026. The
`ultimate burden of proof, by a preponderance of the evidence,
`remains always on the party asserting abandonment. Emergency One,
`228 F.3d at 536; Rivard v. Linville, 133 F.3d 1446, 1449 (Fed.Cir.
`1998).
`Defendant submits no evidence for his claim that Plaintiff has
`abandoned its marks. His one page motion merely states “[p]er Mr.
`
`20
`
`
`
`Case 8:06-cv-00522-DKC Document 41 Filed 11/30/06 Page 21 of 24
`
`Ney’s statement, the Court may safely conclude that Doc Savage was
`last printed by Advance in 1990, while The Shadow was last used in
`1994. . . .” (Paper 28 at 1). Defendant does not make clear which
`statement by Plaintiff he refers to, and the court cannot find any
`support for his assertion on the record. The moving party in a
`summary judgment motion bears the burden of proving that no genuine
`dispute as to any material fact exists. See Fed.R.Civ.P. 56(c).
`Because Defendant has submitted no evidence that Plaintiff has
`abandoned the Doc Savage and The Shadow marks, his motion for
`partial summary judgment on counts III, IV, and V (paper 28) will
`be denied.
`IV. Other Motions
`A. Untitled Motion
`Defendant filed a “request to file motion” asking the court’s
`permission to “A, contact the Estate of Walter Gibson with
`information about rights said estate might not know it holds, and
`B, file a motion . . . to dismiss a portion of the complaint
`against the Defense relating to digital reproductions.
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