Case 1:14-cv-10419-LTS Document 151 Filed 09/27/16 Page 1 of 6
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`SOFT-AID, INC.,
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`Plaintiff,
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`v.
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`SAM-ON-DEMAND, LLC and
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`DAVID MANSFIELD,
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`Defendants.
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`Civil No. 14-CV-10419-LTS
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`ORDER ON REPORT AND RECOMMENDATION (DOC. NO. 140)
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`September 26, 2016
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`SOROKIN, J.
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`After de novo review of Magistrate Judge Boal’s Report and Recommendation, Doc. No.
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`140, and both parties’ objections, Doc. Nos. 146, 147, and replies to those objections, Doc. Nos.
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`149, 150, the Court ADOPTS the Report and Recommendation with the exception of the analysis
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`of copyright infringement (Count I) at to the statement of work template (“SOW”) (TXu-1-867-
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`104) and the software by machine query computer code (TXu-1-867-067).
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`Plaintiff objects to the Magistrate Judge’s recommendation that its Motion for Summary
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`Judgment be denied on its copyright infringement claim (Count I) against Defendant Sam-on-
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`Demand as to the SOW and the software by machine query computer code.1 To establish
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`copyright infringement, Plaintiff must prove two elements: “ownership of a valid copyright” and
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`1 As the Magistrate Judge pointed out, Plaintiff did not include copies of the contracts with its
`Motion for Summary Judgment. Plaintiff did submit copies with Plaintiff’s Reply. See Doc. No.
`128-15, 128-51. As it is within the Court’s discretion to consider material not properly presented
`to the Magistrate Judge, I will consider those contracts here.
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`Case 1:14-cv-10419-LTS Document 151 Filed 09/27/16 Page 2 of 6
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`“copying of constituent elements of the work that are original.” Johnson v. Gordon, 409 F.3d 12,
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`17 (1st Cir. 2005). In its Reply to Plaintiff’s Objections, Doc. No. 149, Defendant challenges
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`both elements.
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`To show ownership of a valid copyright, ‘a plaintiff must prove that the work as a whole
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`is original and that the plaintiff complied with applicable statutory formalities.’” Soc’y of Holy
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`Transfiguration Monastery, Inc. v. Gregory, 689 F.3d 29, 40 (1st Cir. 2012) (quoting Lotus Dev.
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`Corp. v. Borland Int’l, Inc., 49 F.3d 807, 813 (1st Cir. 1995)). “It is generally accepted that ‘a
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`certificate of copyright registration constitutes prima facie evidence of copyrightability and shifts
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`the burden to the defendant to demonstrate why the copyright is not valid.’” Id. (quoting Lotus
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`Dev. Corp., 49 F.3d at 813); see Johnson, 409 F.3d at 17 (“A certificate of copyright constitutes
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`prima facie evidence of ownership and originality of the work as a whole.”). Plaintiff has
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`provided copies of its certificates of copyright registration for both copyrights, thus shifting the
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`burden to Defendant to produce evidence that the copyright is not valid. See Doc. Nos. 128-148,
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`128-149, 128-150, 128-151, 128-152, 128-153. Defendant has not met its burden.
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`Contrary to what Defendant asserts in its Reply to Plaintiff’s Objections, the onus is not
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`on Plaintiff to prove originality. The existence of the certificates is sufficient to establish
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`originality unless Defendant can rebut that presumption. See 17 U.S.C. § 410(c). At the outset,
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`the Court notes that a contract can enjoy the protection of a copyright, that is they are not
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`inherently uncopyrightable. See Total Marketing Techs., Inc. v. Angel MedFlight Worldwide Air
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`Ambulance Servs., LLC, No. 8:10-cv-2680-T-33TBM, 2012 WL 2912515, at *5 (M.D. Fla. July
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`16, 2012) (“The Court finds nothing in the copyright regulations precluding copyright of a
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`contract.”); C&J Mgmt. Corp. v. Anderson, 707 F. Supp. 2d 858, 862 (S.D. Iowa 2009)
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`(collecting cases); 1–2 Nimmer on Copyright § 2.18[E] (2009) (“There appear to be no valid
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`2
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`Case 1:14-cv-10419-LTS Document 151 Filed 09/27/16 Page 3 of 6
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`grounds why legal forms such as contracts . . . and other legal documents should not be protected
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`under the law of copyright.”). On the SOW, Defendant offers only speculation that the contract is
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`not copyrightable but never explains why beyond conclusory assertions that the contract is not
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`original. Defendant asserts in its reply that Microsoft provided the information and guidelines
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`necessary to create the SOW. But as evidence Defendant points only to a Declaration which
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`vaguely references that “Microsoft provided guidelines that needed to be achieved and included
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`within the statement of work.” Doc. No. 120 at 1. Defendant offers no specifics describing the
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`guidelines Microsoft provided. This is insufficient evidence to overcome the presumption of
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`validity because Defendant has not identified the material, if any, provided by Microsoft.
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`Defendant also invokes the rule laid down in the Morrissey case suggesting that only a limited
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`number of ways exist to express the terms of the SOW. See Morrissey v. Proctor & Gamble Co.,
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`379 F.2d 675, 678–79 (1st Cir. 1967). But, the four corners of the SOW do not establish that
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`point and Defendant fails to establish by evidence or meaningful argument that this is so.
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`On the query computer code, Defendant notes that some of the code involved in the
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`queries were publically available, but he provides no evidence of any such code or its nature.
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`Next, he states that he considers himself a coauthor of any original work but the Court ADOPTS
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`the Magistrate Judge’s rejection of this assertion for the reasons stated in the Report and
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`Recommendation. Defendant also claims that the copyright is not valid because the work is not
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`original, again based on the Microsoft guidelines. Defendant’s evidence again falls short; based
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`on the Declaration cited, Microsoft provided an Excel document that the code populated. Id. at
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`1–2. Defendant has not shown how Microsoft’s providing a format for the output renders the
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`code gathering the information and creating the output is uncopyrightable. Defendant’s
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`Morrissey argument again fails for the same reason as above: there are countless ways to write a
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`Case 1:14-cv-10419-LTS Document 151 Filed 09/27/16 Page 4 of 6
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`computer code that would gather the information Microsoft requires. Because Defendant has
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`offered no evidence or persuasive argument that would rebut the presumption of
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`copyrightability, Plaintiff has established ownership of a valid copyright as to both the SOW and
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`the queries.
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`The second element is met by the Plaintiff showing, first, “that, as a factual matter, the
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`defendant copied the plaintiff’s copyrighted material.” Johnson, 409 F.3d at 18. To do so,
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`Plaintiff can either “present direct evidence of factual copying or, if that is unavailable, evidence
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`that the alleged infringer had access to the copyrighted work and that the offending and
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`copyrighted work are so similar that the court may infer that there was factual copying.” Lotus
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`Dev. Corp., 49 F.3d at 813. Here, access to the copyrighted work is undisputed. While Defendant
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`attempts to assert that Plaintiff has not proven that the works are so similar as to allow an
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`inference of copying, common sense tells us that they are copied. See Segrets, Inc. v. Gillman
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`Knitwear Co., Inc., 207 F.3d 56, 62 (1st Cir. 2000) (“[T]here are unquestionably sufficient
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`articulable similarities to justify a finding that the defendant has copied from the protected work.
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`Indeed, other than color, it is difficult to find any articulable differences between the . . .
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`design[s].” (quotation marks and citation omitted)). The documents are nearly identical with the
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`exception of the company names. Compare Doc. No 128-57, with Doc. No. 128-58; compare
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`Doc. No. 128-15, with Doc. No. 128-51. Thus, the Court concludes that Defendant copied
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`Plaintiff’s copyrighted material.
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`Second, Plaintiff must prove “that the copying of the copyrighted material was so
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`extensive that it rendered the infringing and copyrighted works substantially similar.” Johnson,
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`409 F.3d at 18. Defendant offers citations to a number of cases about substantial similarity.
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`When, as here, the documents are essentially identical with the exception of the company and
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`Case 1:14-cv-10419-LTS Document 151 Filed 09/27/16 Page 5 of 6
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`client names, Defendant has no serious argument about substantial similarity. The cases
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`Defendant cites to attempt to establish that the documents are not substantially similar are
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`unavailing because they concern works of art. See Johnson, 409 F.3d at 14 (musical
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`composition); Concrete Machinery Co., Inc. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 603
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`(1st Cir. 1988) (concrete lawn ornaments). Those cases are easily distinguished from the
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`situation that presents itself here: the content here was copied in full by Defendant. Defendant
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`also argues that the existence of the Microsoft guidelines means that Plaintiff has not shown that
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`the works are substantially similar. But Defendant has pointed to no code that was provided by
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`Microsoft or provided the Microsoft guidelines to the Court to allow an analysis of whether what
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`Defendant copied was original. Thus, Defendant has failed to raise an issue of material fact on
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`either the SOW or the query copyright.
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`On Count I, Plaintiff’s claim for copyright infringement as to the SOW (TXu-1-867-104)
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`and the software by machine query computer code (TXu-1-867-067), the Court ALLOWS the
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`Motion for Summary Judgment. The Court ADOPTS the Magistrate Judge’s recommendation as
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`to Count I for the other copyrights Plaintiff claims are infringed and note that Defendant did not
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`object to this portion of the Recommendation of the Magistrate Judge. The Court rejects
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`Defendant’s objections to the Report and Recommendation. The Court ALLOWS Plaintiff’s
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`Motion to Supplement the Complaint, Doc. No. 133. The Court DENIES Plaintiff’s Motion for
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`Summary Judgment, Doc. No. 110, as to misappropriation of trade secrets (Count III), breach of
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`contract (Count IV), and breach of the implied covenant of good faith and fair dealing (Count V).
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`The Court ALLOWS Plaintiff’s Motion for Summary Judgment as to the Lanham Act claims
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`(Count II), unfair competition (Count VI), violations of Chapter 93A (Count VII), and unjust
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`enrichment (Count VIII). The Court DENIES summary judgment on Defendants’ counterclaims
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`Case 1:14-cv-10419-LTS Document 151 Filed 09/27/16 Page 6 of 6
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`for defamation (Count I), intentional interference with business relationships (Count II), uniform
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`trade deceptive practices (Count III), and declaratory relief (Count V). The Court ALLOWS
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`summary judgment for Plaintiff on Defendants’ counterclaim for CFAA violations (Count IV).
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`Within fourteen days, the parties shall file a joint status report stating (a) the anticipated
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`duration of trial; (b) whether the parties anticipate any mediation process and, if so, the amount
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`of time needed for such a process (either in the Court’s mediation program or otherwise as the
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`parties prefer); and (c) whether all parties consent to the exercise of jurisdiction by the magistrate
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`judge assigned to this case (the parties shall not report their individual positions and the failure to
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`consent shall not result in any adverse substantive consequence).
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`SO ORDERED.
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` /s/ Leo T. Sorokin
`Leo T. Sorokin
`United States District Judge
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`6