Case 1:16-cv-00009-SM Document 75 Filed 05/23/18 Page 1 of 41
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`UNITED STATES DISTRICT COURT
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`DISTRICT OF NEW HAMPSHIRE
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`
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`Intellitech Corporation,
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`Plaintiff
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`
`
`
`
`
`v.
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`
`
`
`
`
`
`
`The Institute of Electrical and
`Electronics Engineers, Inc.
`a/k/a IEEE,
`
`Defendant
`
`
`
`
`
`
`Case No. 16-cv-0009-SM
`Opinion No. 2018 DNH 109
`
`O R D E R
`In this suit for copyright infringement, plaintiff,
`Intellitech Corporation, alleges that defendant, The Institute
`of Electrical and Electric Engineers (“IEEE”), infringed what it
`claims to be its original, registered, work, entitled “Clause
`for a Pipeline v. 20.” Intellitech seeks injunctive relief,
`statutory damages, attorneys’ fees, and costs. Plaintiff moves
`for summary judgment with respect to liability. Defendant, for
`its part, seeks partial summary judgment on plaintiff’s requests
`for statutory damages, attorneys’ fees and injunctive relief.
`For the reasons given below, both motions for summary judgment
`are necessarily denied.
`
`STANDARD OF REVIEW
`When ruling on a motion for summary judgment, the court is
`“obliged to review the record in the light most favorable to the
`nonmoving party, and to draw all reasonable inferences in the
`
`
`
`UNITED STATES DISTRICT COURT
`
`DISTRICT OF NEW HAMPSHIRE
`
`
`
`Intellitech Corporation,
`
`Plaintiff
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`The Institute of Electrical and
`Electronics Engineers, Inc.
`a/k/a IEEE,
`
`Defendant
`
`
`
`
`
`
`Case No. 16-cv-0009-SM
`Opinion No. 2018 DNH 109
`
`O R D E R
`In this suit for copyright infringement, plaintiff,
`Intellitech Corporation, alleges that defendant, The Institute
`of Electrical and Electric Engineers (“IEEE”), infringed what it
`claims to be its original, registered, work, entitled “Clause
`for a Pipeline v. 20.” Intellitech seeks injunctive relief,
`statutory damages, attorneys’ fees, and costs. Plaintiff moves
`for summary judgment with respect to liability. Defendant, for
`its part, seeks partial summary judgment on plaintiff’s requests
`for statutory damages, attorneys’ fees and injunctive relief.
`For the reasons given below, both motions for summary judgment
`are necessarily denied.
`
`STANDARD OF REVIEW
`When ruling on a motion for summary judgment, the court is
`“obliged to review the record in the light most favorable to the
`nonmoving party, and to draw all reasonable inferences in the
`
`
`
`Case 1:16-cv-00009-SM Document 75 Filed 05/23/18 Page 2 of 41
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`nonmoving party's favor.” Block Island Fishing, Inc. v. Rogers,
`844 F.3d 358, 360 (1st Cir. 2016) (citation omitted). Summary
`judgment is appropriate when the record reveals “no genuine
`dispute as to any material fact and the movant is entitled to
`judgment as a matter of law.” Fed. R. Civ. P. 56(a).
`
`In this context, a factual dispute “is ‘genuine’ if the
`evidence of record permits a rational factfinder to resolve it
`in favor of either party, and ‘material’ if its existence or
`nonexistence has the potential to change the outcome of the
`suit.” Rando v. Leonard, 826 F.3d 553, 556 (1st Cir. 2016)
`(citation omitted). Consequently, “[a]s to issues on which the
`party opposing summary judgment would bear the burden of proof
`at trial, that party may not simply rely on the absence of
`evidence but, rather, must point to definite and competent
`evidence showing the existence of a genuine issue of material
`fact.” Perez v. Lorraine Enters., 769 F.3d 23, 29–30 (1st Cir.
`2014). In other words, if the nonmoving party's “evidence is
`merely colorable, or is not significantly probative,” no genuine
`dispute as to a material fact has been proved, and summary
`judgment may be granted. Anderson v. Liberty Lobby, Inc., 477
`U.S. 242, 249-50 (1986) (citations omitted).
`
`So, to defeat a properly supported motion for summary
`judgment, the non-movant must support his or her factual claims
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`Case 1:16-cv-00009-SM Document 75 Filed 05/23/18 Page 3 of 41
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`with evidence that conflicts with that proffered by the moving
`party. See generally Fed. R. Civ. P. 56(c). It naturally
`follows that while a reviewing court must take into account all
`properly documented facts, it may ignore a party's bald
`assertions, speculation, and unsupported conclusions. See
`Serapion v. Martinez, 119 F.3d 982, 987 (1st Cir. 1997). See
`also Scott v. Harris, 550 U.S. 372, 380 (2007) (“When opposing
`parties tell two different stories, one of which is blatantly
`contradicted by the record, so that no reasonable jury could
`believe it, a court should not adopt that version of the facts
`for purposes of ruling on a motion for summary judgment.”).
`
`BACKGROUND
`The IEEE is a not-for-profit corporation that, with the
`
`involvement and assistance of employees and expert volunteers,
`develops and publishes technical standards applicable in a wide
`range of electrical and electronic endeavors. Those standards
`are typically developed by “working groups” comprised of
`industry participants collaborating together. Once finalized,
`the standards are published by IEEE, and made available to IEEE
`members, as well as members of the general public.
`
`To develop general technical standards, working group
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`members participate in meetings, typically held weekly or
`biweekly, draft and review position pieces, and create and
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`review presentations. Bennett Declaration (Document No. 13-4) ¶
`4; Clark Declaration (Document No. 23-1) at ¶ 4. Meetings are
`usually conducted telephonically or remotely via Webex or other
`remote conferencing software. Bennett Declaration at ¶ 4. Each
`working group has its own password protected website for use,
`called a “grouper” site. Id. at ¶ 6. The grouper site acts as
`a repository for the group’s working materials, including drafts
`or other materials group members may want to review or consider.
`Group members routinely upload drafts, proposed language, and
`presentations to the grouper site for review and comment. Id.
`at ¶ 8. Minutes from group meetings are also stored on the
`grouper site. Id. at ¶ 6.
`
`IEEE’s copyright policy governing the standards development
`
`process (the “Policy”) is fairly straightforward.1 It requires
`
`
`1
`Intellitech argues that the IEEE-SA’s Policy is not
`relevant here because “the actual copyright rules of the parent
`corporation which is the Defendant in this case [IEEE, Inc.]” do
`not reference implied licenses. Pl.’s Reply in Supp. of Mot.
`for Summary Judgment at 8. Intellitech says that IEEE is
`relying upon the rules of a “different, perhaps related, entity,
`IEEE-SA,” and has not established that IEEE-SA’s rules are
`applicable here. Id. Intellitech points to IEEE, Inc.’s
`“Section 6 – Published Products and Services” policy, and
`seemingly takes the position that Section 6 applies to the P1838
`standards development process.
`
`Intellitech’s argument is inconsistent with the position
`taken by its CEO, Christopher J. Clark, in his September 2,
`2014, letter to IEEE counsel, in which he relies upon Section
`7.1 of the IEEE-SA bylaws in support of his position. See
`Document No. 23-4, p. 2. Intellitech makes no effort to explain
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`Case 1:16-cv-00009-SM Document 75 Filed 05/23/18 Page 5 of 41
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`that “[a]ll contributions to IEEE standards development . . .
`meet the requirements outlined in this clause.” Document No.
`13-5 (emphasis added). Two definitions in the Policy are
`relevant to the parties’ dispute. The first defines
`“published,” as:
`[M]aterial for which a claim of copyright is apparent
`(e.g., the presence of the copyright symbol ©; an
`explicit statement of copyright ownership or
`intellectual property rights; stated permission to use
`text; a text reference that indicates the insertion of
`text excerpted from a copyrighted work; or a visual
`indication of an excerpt from another work, such as
`indented text).
`
`Id. The second term, “work product,” is defined as: “the
`compilation of or collective work of all participants (e.g., a
`
`
`why IEEE-SA’s policies were applicable to the mechanisms of the
`P1838 working group as of September 2, 2014, but are now
`inapplicable. Intellitech also seemingly relies upon IEEE-SA’s
`bylaws and practices in its motion for summary judgment,
`referencing the copyright policy in support of its position.
`See Pl.’s Mem. in Supp. of Mot. for Summary Judgment at n.2.
`
`Moreover, the evidence in the record does not support
`Intellitech’s position. As defendant points out, Kathryn
`Bennett, IEEE’s Senior Program Manager with administrative
`oversight for the P1838 working group, explained in her
`Declaration that IEEE-SA’s copyright policies applied to and
`governed the work of the P1838 working group. See Bennett
`Declaration at ¶ 8. And, the Policy itself clearly states: “All
`contributions to IEEE standards development . . . shall meet the
`requirements outlined in this clause.” Document No. 13-5. The
`parties’ suit arose out of the IEEE standards development
`process. Intellitech fails to point to any competent evidence
`to the contrary.
`
`For all those reasons, Intellitech’s argument is not
`persuasive.
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`5
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`Case 1:16-cv-00009-SM Document 75 Filed 05/23/18 Page 6 of 41
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`draft standard; the final approved standard; draft Industry
`Connections white paper; Industry Connections web site).” Id.
`
`In relevant part, the Policy states:
`7.2 Policy
`The IEEE owns the copyright in all Work Products.
`Participants are solely responsible for determining
`whether disclosure of any contributions that they
`submit to the IEEE requires the prior consent of other
`parties and, if so, to obtain it.
`7.2.1 Contributions from previously Published sources
`All contributions from previous Published sources that
`are not Public Domain shall be accompanied by a
`Copyright Permission Form that is completed by the
`copyright owner, or by a person with the authority or
`right to grant copyright permission. The Copyright
`Permission Form shall outline the specific material
`being used and the planned context for its usage in
`the Work Product.
`7.2.2 Contributions not previously Published
`For any contribution that has not been previously
`Published, and that is not Public Domain:
`a) The IEEE has the non-exclusive, irrevocable,
`royalty-free, worldwide rights (i.e., a license) to
`use the contribution in connection with the
`development of the Work Product for which the
`contribution was made.
`
`…
`Copyright ownership of the original contribution is
`not transferred or assigned to the IEEE.
`Id. (all emphasis in original).
`
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`The events giving rise to this dispute arose out of IEEE’s
`efforts to develop a technical standard for “Test Access
`Architecture for Three-Dimensional Stacked Integrated Circuits.”
`The P1838 working group, tasked with the development of the
`standard, was divided into three subgroups called “Tiger Teams.”
`Each Tiger Team was assigned responsibility for various aspects
`of the overall standard, and the teams worked separately on
`concepts and proposed language for their assigned areas.
`Breitfelder Declaration (Document No. 57-3) at ¶ 3.
`Intellitech’s CEO, Christopher J. Clark, was a member of Tiger
`Team 1. Clark has a long history with IEEE, having volunteered
`with the organization for over 24 years, chairing three
`different working groups during that time.
`
`The parties disagree about the role Clark played on Tiger
`Team 1. Clark argues that, while participating in the working
`group, he developed Intellitech’s “position piece” on how serial
`access and pipeline registers should be managed by a 3D standard
`“[e]ntirely on his own,” and retained and exercised exclusive
`control over the document he created. Pl.’s Mem. in Supp. of
`Mot. for Summary Judgment at 4; Clark Declaration (Document No.
`60-2) at ¶¶ 13-16. Clark says he distributed multiple versions
`of the document to his team members, but always in uneditable
`electronic form, bearing an Intellitech “watermark.” Clark
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`Declaration (Document No. 23-1) at ¶ 7. And, Clark says that,
`as the working group discussed his document, he refined it,
`presenting and explaining the rationale for Intellitech’s
`position as it evolved. Clark Declaration (Docket No. 23-1) at
`¶ 7. Clark contends he “named the Intellitech position piece,
`in its final form, ‘Clause for a Pipeline v. 20’” (hereinafter,
`the “Clause”). Pl.’s Mem. in Supp. of Mot. for Summary Judgment
`at 5.
`
`The defendant, however, characterizes Clark’s role quite
`differently — as the Tiger Team 1 “designated ‘scribe.’”2 Def.’s
`Mem. in Opp. to Summary Judgment at 4. Defendant draws a
`distinction between PowerPoint slide presentations Clark made to
`the team (“position pieces”) and the team’s collaborative
`development of the Clause, which, defendant says, “contained
`language proposed and formatted for the purpose of comprising,
`or being included in, the draft P1838 standard[,] and which
`reflected the consensus of the team.” Id. at 4-5. Defendant
`takes the position that Clark was developing, compiling, and
`presenting language for the team to consider and eventually
`incorporate into the draft standard. The proposed Clause, as
`
`
`2
`Clark strenuously disagrees that he was a mere “scribe,”
`but he seemingly misunderstands the term given the context in
`which it was used. See Clark Declaration (Document No. 60-2),
`¶ 17.
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`evolved, represented the “consensus and collective judgment of
`the team as to how to express the ideas they were jointly
`developing.” Id. at 12.
`
`In any event, on April 10, 2014, Clark circulated an early
`version of the Clause to the Tiger Team. He wrote: “[h]ere is
`the foundational clause needed to describe pipeline bits. I
`have come up with ‘short names’ for the paths that everyone had
`selected last week. I use those path names to create a set of
`rules and recommendations.” Document No. 57-2, at p. 1.
`
`Prior to the Tiger Team meeting on May 8, 2014, Clark
`circulated another version of the Clause, writing: “I’m
`attaching a proposed clause, subject to [working group] changes,
`on the pipeline register.” Document No. 57-2, at p. 6. And, at
`the Tiger Team meeting on May 8, 2014, Clark told the team that
`he had “developed a clause for the pipeline.” Document No. 13-
`6, at p. 16. In the context of the team’s discussion of the
`document, team member Eric Jan Marinissen commented, “It looks
`like it’s in the IEEE template.” Id., at p. 17. Clark
`responded, “It’s exactly that. . . Written to be able to get in
`to the standard.” Id.
`
`On May 13, 2014, Clark circulated yet another version of
`the Clause prior to the team’s next meeting. Document No. 66-6,
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`at p. 1. He wrote: “Here is the latest document which hopefully
`reflects the position of the majority of TT1 members.” Id. The
`team continued to discuss the latest version of the Clause at
`the next meeting (May 15, 2014). See Document No. 13-6, at
`p. 19. That process continued over the next several months,
`with Clark circulating evolving versions of the Clause to the
`team, and the team discussing the document at their meetings.
`See, e.g., Document No. 57-2, at p. 12 (Clark circulating
`version reflecting revisions “as discussed,” and requesting that
`team members “tweak it and make it ready for a vote as a whole
`clause in the coming weeks”); Document No. 13-6, at p. 20-28
`(May 29, 2014, and June 5, 2014, team meeting minutes); Document
`No. 57-2, at p. 20 (June 12, 2014, email from Clark, circulating
`“most recent version” of Clause); Document No. 13-6, at p. 29
`(June 12, 2014, team meeting minutes, including agenda item:
`“Review CJ’s clause-for-pipeline-v7.pdf”).
`
`At a Tiger Team 1 meeting held on July 10, 2014, Marinissen
`raised concerns about the Intellitech watermark Clark had
`included on all versions of the Clause he presented and
`circulated. Document No. 13-6, p. 33. Marinissen asked Clark
`to either remove the watermark, or change the mark to P1838.
`Clark noted that, until the team “vote[d] on something for P1838
`and [made] it part of the standard, he consider[ed] [the Clause]
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`Intellitech’s[, and] would rather keep the Intellitech
`watermark.” Id. The discussion continued:
`[Clark] doesn’t want people to copy it and call it
`their own. It was then pointed out that this is a
`group effort and some of the ideas in the slides are
`from others in the working groups. . . . [S]ome of
`the information that gets added to this document is
`from the working group discussion and it is not
`appropriate to have the [I]ntellitech watermark.
`[Clark] said he would like to continue the way he is
`doing it at the moment.
`
`Document No. 13-6, p. 33.
`
`Clark responded further to Marinissen’s concerns regarding
`
`Intellitech’s watermark in an email dated July 17, 2014.
`Document No. 23-4, p. 123. Clark wrote:
`I went back and reviewed v1 to v14 [of the Clause,]
`and I could not identify a figure or text which could
`stand-alone be copyrightable to another [working
`group] member, hence I could not see whether joint
`authorship existed. The words and figures, I
`authored, even if it was in response to me asking
`questions as to ‘what is it you want?’ to [working
`group] members. . . . I am not the editor nor am I
`creating or working with the P1838 draft which is
`copyright IEEE. You can see a distinct difference
`between what I supply to the P1149.10 [working group]
`which is the P1149.10 draft with a copyright
`attributed to the IEEE[,] and the attached document
`which is in ‘Clause’ form with rules, recommendations.
`Figures in P1149 which are authored by Intellitech
`were donated to the [working group] to use in the
`draft. That is the correct terminology[:] “donated.”
`…
`I would say the discussion is ‘much ado about nothing’
`as I had already said I would donate the material to
`the IEEE should we accept this inclusion with the
`draft. All in all we should be creating an air of
`encouragement and thanks when members are contributing
`
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`numerous hours to creation of content for the
`standard. It’s an entirely different effort than
`attending meetings.
`
`Document No. 23-4, p. 123. In that same email, Clark wrote that
`he had not made any changes to the current version of the Clause
`“since last week,” and, “[f]or homework due next week,” the team
`should “review the clause lines 1-121 and send feedback to the
`group of suggested changes, otherwise I would entertain a motion
`next week to accept the clause as written.” Id.
`
`On July 24, 2014, Clark circulated version 16 of the
`Clause. He wrote: “This is the proposed clause for pipeline and
`registration cells. Version 16 captures the changes . . . from
`our last meeting. . . . I suspect that we are close to wrapping
`up in a week or two. The proposal captures all the input
`supplied from various members (i.e.[,] we worked towards
`minority inclusion rather than minority exclusion.” Document
`No. 57-2, p. 28.
`
`The team continued to meet, and, at its July 31, 2014,
`meeting, seemed close to finalizing the document for insertion
`into the main draft standard. Document No. 66-10, pp. 1-2.
`Clark noted at the start of the meeting that he had circulated a
`version of the Clause the night prior (version 17), and the team
`reviewed that version together. Clark discussed changes he made
`
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`to the document based on team member’s comments, and solicited
`feedback on revisions. Id., p. 1. Clark then asked the team:
`If we were to put [the Clause] up for a vote [to
`present to the main P1838 group,] what would be the
`additional changes we’d like to see that would convert
`a no vote to a yes vote . . . I would prefer to have a
`unanimous vote and then bring it to the main group. .
`. . This is a major milestone. This would be the
`first main clause to be inserted in to the main draft
`and I want it to be unanimous. According to IEEE[,]
`you should incorporate comments from the minority.
`
`Id., p. 2.
`
`On August 7, 2014, Clark emailed the Clause, version 20, to
`
`team members, “with changes from today.” Document No. 62-2,
`p. 2. He wrote: “Group wanted to remove ambiguity with using
`hex and decimal for capture and reset values such that each
`value is explicitly defined (no ambiguous padding). Other
`feedback on recommendation and grammar was incorporated in the
`meeting.” Id. Clark asked team members to review and provide
`feedback prior to the next team meeting. On August 14, 2014,
`Marinissen emailed Clark, requesting a Microsoft Word version of
`the Clause so he could make his “suggested edits directly” in
`the document with “Track Changes.” Document No. 23-4, p. 126.
`After Clark provided Marinissen with a Word version, Marinissen
`emailed the team the Clause with his proposed revisions,
`including replacement of the Intellitech watermark with a P1838
`watermark. See Document No. 23-4, p. 128.
`
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`According to Clark, he “objected immediately to . . .
`
`Marinissen’s pirating of [his] work and . . . halted [Tiger Team
`1] meetings until we could resolve the issue.” Clark
`Declaration (Document No. 23-1) at ¶ 10. Then, on September, 2,
`2014, Clark wrote to Eileen Lach, IEEE’s General Counsel and
`Chief Compliance Officer, articulating the position that
`Intellitech was the author and copyright owner of the Clause,
`and complaining that Marinissen “conducted willful infringement;
`he was advised who the copyright holder was, had an opportunity
`not to infringe, sought out the original document under false
`pretenses and claimed the copyrighted work for his own working
`group’s use.” Document No. 23-4, pp. 2-3. Clark requested that
`IEEE order Marinissen to issue a written apology to Intellitech,
`and to promise “not to misappropriate any participant’s
`material.” Id., p. 3.
`
`The team attempted to resume meeting on September 11, 2014,
`but Kathryn Bennett, IEEE’s Senior Program Manager with
`administrative oversight for the P1838 working group, emailed
`team members that meetings would cease until the copyright issue
`was resolved by IEEE. Document No. 14-12, at p. 1. Intellitech
`and IEEE engaged in additional correspondence, with Intellitech
`sending IEEE a “take-down notice,” or a cease and desist letter
`“asserting [Intellitech’s] copyright ownership and IEEE’s
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`infringement.”3 Clark Declaration, Document No. 23-1, at ¶ 12;
`see also Document No. 60-13, p. 2 (October 10, 2014 email from
`Clark stating, “Please be advised that [IEEE] was sent a take-
`down notice previously with today, 10/10/2014 as the expiration.
`Should no action be taken[,] we will be forced to assume that
`the IEEE will not comply.”). On October 10, 2014, IEEE
`responded:
`While IEEE strongly disagrees with your assertions of
`impropriety and copyright infringement, of which IEEE
`believes none to have occurred, as a sign of good
`faith, and with respect to all rights and contentions
`of IEEE, pending resolution of our investigation of
`the matter, please be advised that we have removed the
`files you identified from our servers.
`
`Document No. 60-13, p. 2. By letter dated November 17, 2014,
`IEEE further stated: “there is no present plan to incorporate
`Clause for Pipeline v20 into the IEEE Std 1838 standard and any
`precursory drafts thereof.” Document No. 14-5, p. 3. Clark
`
`
`3
`In recent court filings, Clark takes the position:
`
`[T]he copyright issues being discussed by me with
`P1838 members involved [an] issue of copyright
`ownership, not copyright infringement. I simply was
`educating Marinissen and making the required ownership
`statement. I did, and do certainly still today,
`consider Mr. Marinissen’s conduct in creation of a
`derivative work on or after August 14, 2014[,] to have
`been improper, as well as directly contrary to IEEE
`ethics rules.
`
`Clark Declaration (Document No. 62-1), at ¶ 4. He further
`states: “I never asserted that the IEEE infringed on any of
`Intellitech’s copyright rights.” Id.
`
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`“verified personally that . . . all copies of [plaintiff’s work]
`were removed from the IEEE servers,” and “Intellitech was
`satisfied with IEEE’s response.” Clark Declaration (Document
`No. 23-1) at ¶ 12.
`
`On October 23, 2014, “Clause for a Pipeline v. 20” was
`registered with the United States Copyright Office Registration
`No. TXu 1-911-804. And, evidence in the record suggests that
`Tiger Team 1 was ultimately disbanded in late 2014.4 See Bennett
`Declaration (Document No. 13-4) at ¶ 20.
`
`In October, 2015, Marinissen filed an extension request
`
`with IEEE for P1838. See Document No. 14-9. In an effort to
`explain why an extension was necessary, Marinissen wrote:
`The copyright issue that was encountered in [Tiger
`Team] 1 was rather specific. The chair of [Tiger
`Team] 1 claimed copyright to a section of the draft
`standard that was developed within the subgroup.
`IEEE-SA does not agree with that copyright claim,
`which led to a conflict with the chair of [Tiger Team]
`1. The Working Group disband[ed] [Tiger Team] 1 and
`suspended activities on this topic for one year. The
`Working Group is in the process of starting up a
`[Tiger Team] 4 with the same technical charter as
`[Tiger Team] 1 had. [Tiger Team] 4 will produce a
`fresh write-up of the various standard clauses,
`
`4
`The evidence in the record is somewhat unclear on that
`point, as certain documents suggest that the team continued to
`meet at least through February, 2015. See, e.g., Document No.
`14-13 (emails between, inter alia, Marinissen and Clark
`regarding February, 2015, meeting minutes and copyright
`licenses).
`
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`thereby avoiding further copyright claims from the
`same person.
`
`Id., p. 4.
`
`The extension was seemingly approved, and Tiger Team 4
`commenced meeting. However, at the first Tiger Team 4 meeting,
`the team’s chair, Adam Cron, presented a five-page document
`containing language from the Clause, asserting its copyright by
`IEEE. Cron circulated versions of the document, entitled “IEEE
`P1838/D1.01,” to Tiger Team 4 members as meetings progressed
`from December, 2015, through March, 2016, creating, according to
`Intellitech, seven purported derivatives of the Clause.
`
`As of June, 2016, however, Tiger Team 4 had adopted a
`“placeholder draft” of language proposed for inclusion in the
`P1838 standard, which was drafted “specifically to avoid any
`actual or apparent overlap in language with the ‘Clause.’”
`Breitfelder Declaration (Document No. 57-3) at ¶ 5. Team 4
`continued to amend and update the placeholder, which was
`ultimately incorporated into the draft P1838 standard. Id. at
`¶¶ 6-8. Neither the “placeholder draft” nor the current draft
`of the P1838 standard contains any language from the Clause.
`Id. at ¶ 11. IEEE has stated that the “P1838 Working Group has
`no intention of using any language from the Clause . . . in any
`
`
`17
`
`
`
`Case 1:16-cv-00009-SM Document 75 Filed 05/23/18 Page 18 of 41
`
`further iterations of the proposed draft standard or in the
`final standard itself.” Id. at ¶ 12.
`
`I.
`
`DISCUSSION
`Intellitech’s Motion for Partial Summary Judgment
`(On Liability Only)
`
`Intellitech asserts that there are no genuine issues of
`material fact regarding its copyright infringement claim, and,
`as it has demonstrated both its valid ownership of the copyright
`for “Clause for a Pipeline v. 20,” and that defendant “copied,
`used and modified” its “Clause for a Pipeline v. 20” when it
`created seven purported derivatives of the Clause in December,
`2015, through March, 2016, it is entitled to summary judgment on
`its infringement claim. Pl.’s Mem. in Supp. of Mot. for Summary
`Judgment at 11.
`
`Defendant offers two responses. First, defendant contends
`that, to the extent Intellitech does own the copyright in the
`Clause,5 IEEE had (and has) a non-exclusive, irrevocable and
`perpetual license to use the Clause in connection with the P1838
`
`
`5
`There is evidence in this record sufficient to contradict
`Intellitech’s factual claim of copyright ownership, and perhaps
`to establish a potential joint ownership in the work. See 1
`Nimmer on Copyright § 6.03 (citations omitted); see generally
`Herbert, M. D., J. D. v. United States, 36 Fed. Cl. 299 (1996).
`Again, material issues of fact preclude summary judgment in
`favor of Intellitech.
`
`
`18
`
`
`
`Case 1:16-cv-00009-SM Document 75 Filed 05/23/18 Page 19 of 41
`
`working group’s efforts to develop a new technical standard.
`Second, defendant argues that its use of the Clause was
`protected by copyright law, because the Clause was used only to
`give new expression to the working group’s ideas, and the final
`version of the P1838 standard will not contain language from the
`Clause.
`
`Implied License
`A.
`“To establish copyright infringement under the Copyright
`Act, ‘two elements must be proven: (1) ownership of a valid
`copyright; and (2) copying of constituent elements of the work
`that are original.’” Johnson v. Gordon, 409 F.3d 12, 17 (1st
`Cir. 2005) (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co.,
`499 U.S. 340, 361 (1991)). “The plaintiff bears the burden of
`proof as to both elements.” Id. (citations omitted). However,
`where a copyright owner grants a nonexclusive license to another
`party, “[u]ses of the copyrighted work that stay within the
`scope of a nonexclusive license are immunized from infringement
`suits.” John G. Danielson, Inc. v. Winchester-Conant Props.,
`Inc., 322 F.3d 26, 40 (1st Cir. 2003) (citing Graham v. James,
`144 F.3d 229, 236 (2d Cir. 1998).
`
`While transfers of copyright typically “must be made in
`writing, 17 U.S.C. § 204(a),” that “requirement does not apply
`to nonexclusive licenses where ownership of the copyright is not
`
`19
`
`
`
`Case 1:16-cv-00009-SM Document 75 Filed 05/23/18 Page 20 of 41
`
`transferred, see id. at § 101.” John G. Danielson, Inc., 322
`F.3d at 40. “A copyright owner may grant such nonexclusive
`licenses orally, or they may be implied from conduct which
`indicates the owner's intent to allow a licensee to use the
`work.” Id. (citations omitted). “[I]mplied licenses are found
`only in narrow circumstances,” and the burden of proving the
`existence of the license falls on the purported licensee, the
`party claiming its protection. Estate of Hevia v. Portrio
`Corp., 602 F.3d 34, 41 (1st Cir. 2010).
`
`Our court of appeals has instructed that “[t]he touchstone
`for finding an implied license ... is intent.” Estate of Hevia,
`602 F.3d at 41. Therefore, the court should “ask whether ‘the
`totality of the parties' conduct indicates an intent to grant
`such permission.’” Id. (quoting 3 Melville B. Nimmer & David
`Nimmer, Nimmer on Copyright § 10.03[A][7], at 10–42 (2000)).
`“The test most commonly used in determining if an implied
`license exists with respect to most kinds of works asks whether
`the licensee requested the work, whether the creator made and
`delivered that work, and whether the creator intended that the
`licensee would copy and make use of the work.” Estate of Hevia,
`602 F.3d at 41.
`
`IEEE argues that the totality of the parties’ conduct
`compels the conclusion that — to the extent Intellitech does own
`
`20
`
`
`
`Case 1:16-cv-00009-SM Document 75 Filed 05/23/18 Page 21 of 41
`
`an exclusive copyright in the Clause — Intellitech granted IEEE
`a nonexclusive license to use the language of the Clause for the
`purpose of developing and drafting a P1838 standard. Plaintiff,
`on the other hand, contends that IEEE has not sufficiently
`proved conduct that would support “either an express or implied-
`in-law license at any time.” Pl.’s Reply in Supp. of Mot. for
`Summary Judgment at 8. Construing the evidence in the light
`most favorable to the defendant, and drawing all reasonable
`inferences in its favor, as the court must on a motion for
`summary judgment, a reasonable factfinder could easily conclude
`that under these circumstances the course of conduct between the
`parties necessarily gave rise to an implied license. While
`“intent” is more often a question of fact, some circumstances
`might admit no other rational conclusion then that an intent to
`convey a license was fully understood by all.
`
`The three-part inquiry — whether the licensee requested the
`work, whether the creator made and delivered that work, and
`whether the creator intended that the licensee would make use of
`the work — while not a perfect fit here — still seems to support
`rather than belie such a conclusion.
`
`IEEE “requested” the P1838 working group, of
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