App. 1
`
`NOT PRECEDENTIAL
`
`UNITED STATES COURT OF APPEALS
`FOR THE THIRD CIRCUIT
`-----------------------------------------------------------------------
`No. 18-3711
`-----------------------------------------------------------------------
`PETER BROWNSTEIN,
`Appellant
`v.
`TINA LINDSAY; ETHNIC TECHNOLOGIES, LLC
`-----------------------------------------------------------------------
`On Appeal from the United States District Court
`for the District of New Jersey
`(No. 3-10-cv-1581)
`District Judge: Hon. Freda L. Wolfson
`-----------------------------------------------------------------------
`Argued November 20, 2019
`
`Before: CHAGARES, MATEY, and FUENTES,
`Circuit Judges
`
`(Opinion filed: May 18, 2020)
`
`Jay R. McDaniel, [ARGUED]
`Weiner Law Group
`629 Parsippany Road
`Parsippany, NJ 07054
`
`
` Counsel for Appellant
`
`
`
`
`
`NOT PRECEDENTIAL
`
`UNITED STATES COURT OF APPEALS
`FOR THE THIRD CIRCUIT
`-----------------------------------------------------------------------
`No. 18-3711
`-----------------------------------------------------------------------
`PETER BROWNSTEIN,
`Appellant
`v.
`TINA LINDSAY; ETHNIC TECHNOLOGIES, LLC
`-----------------------------------------------------------------------
`On Appeal from the United States District Court
`for the District of New Jersey
`(No. 3-10-cv-1581)
`District Judge: Hon. Freda L. Wolfson
`-----------------------------------------------------------------------
`Argued November 20, 2019
`
`Before: CHAGARES, MATEY, and FUENTES,
`Circuit Judges
`
`(Opinion filed: May 18, 2020)
`
`Jay R. McDaniel, [ARGUED]
`Weiner Law Group
`629 Parsippany Road
`Parsippany, NJ 07054
`
`
` Counsel for Appellant
`
`
`
`
`
`App. 2
`
`Jesse C. Klaproth, [ARGUED]
`Klaproth Law
`Suite 800
`1500 Walnut Street
`Philadelphia, PA 19102
`
`
` Counsel for Appellees.
`
`
`-----------------------------------------------------------------------
`OPINION*
`-----------------------------------------------------------------------
`MATEY, Circuit Judge.
`
`Innovators have long recognized that “[m]any
`
`ideas grow better when transplanted into another
`mind than in the one where they sprang up.” Oliver
`Wendell Holmes, Sr., The Breakfast Table Series: The
`Poet at the Breakfast Table 146 (1900). So the law en-
`courages collaboration and rewards authors of a joint
`work with the benefits of joint ownership. Peter
`Brownstein seeks a declaration of joint ownership in a
`computer program he developed with Tina Lindsay
`and an accounting of profits. The District Court
`granted summary judgment to Lindsay and her com-
`pany, Ethnic Technologies (“E-Tech”), seeing no proof
`of Brownstein’s role. We will affirm.
`
`
`
`
`* This disposition is not an opinion of the full Court and, pur-
`
`suant to I.O.P. 5.7, does not constitute binding precedent.
`
`
`
`
`
`App. 3
`
`I. BACKGROUND
`In 1993, Lindsay began compiling a set of rules in
`
`order to “predict” a person’s ethnicity. Brownstein v.
`Lindsay, 742 F.3d 55, 59 (3d Cir. 2014). She knew the
`concept had value given her employment at List Ser-
`vices Direct, Inc., a direct-marketing company that
`sold customer lists. Id. at 58–59. So she enlisted
`Brownstein, a fellow List Services employee, to trans-
`form her rules into a computer program. Id. at 59.
`Lindsay’s rules were known as the Ethnic Determinate
`System (“EDS”), and Brownstein’s computer code was
`called “ETHN.” Id. Together, EDS and ETHN became
`the Lindsay Cultural Identification Determinate
`(“LCID”). Id.
`
`In 1996, List Services asserted ownership of the
`
`LCID, prompting Lindsay and Brownstein to leave the
`company in June 1997. Id. at 60. List Services, Lindsay,
`and Brownstein later signed a Settlement Agreement
`in which Lindsay and Brownstein “agree[d] not to
`claim ownership or any other rights” to “a certain com-
`puter program concerning ethnic selections” that List
`Services was “presently using,” and List Services “dis-
`claim[ed] any ownership to EDS.” (App. at 317–18.)
`Years later, things soured between Lindsay and
`Brownstein, and they parted ways. Brownstein, 742
`F.3d at 61.
`
`In 2010, Brownstein filed this lawsuit, seeking a
`
`declaration that he is co-owner of the LCID and an ac-
`counting of any profits Lindsay and E-Tech earned
`from the program after May 2010. Id. at 61–62. The
`
`
`
`App. 4
`
`case proceeded to trial and, at the close of Brownstein’s
`evidence, the District Court granted judgment as a
`matter of law to the defendants. The District Court
`held that Brownstein’s claims were barred by the stat-
`ute of limitations and, in any event, that Brownstein
`lacked evidence showing his co-authorship of the
`LCID. Id. at 62–63. We reversed on appeal, holding
`that the accrual date of Brownstein’s claims was a jury
`question. Id. at 69–75. And we relied on an oral argu-
`ment concession by defendants’ counsel “that Brown-
`stein and Lindsay were co-authors of the LCID up
`until its 1997 iteration” to remand for further factual
`development of the co-authorship issue.1 Id. at 65, 77.
`
`On remand, Brownstein filed an amended com-
`
`plaint, which Lindsay and E-Tech then moved to dis-
`miss. After converting that motion into a motion for
`summary judgment, the District Court held that the
`Settlement Agreement extinguished Lindsay and
`Brownstein’s rights to all pre-Settlement-Agreement
`versions of the LCID. (App. at 26.) The District Court
`then described the “operative question” as whether
`post-Settlement-Agreement versions of the LCID “con-
`tinued to use [Brownstein]’s computer code.” (App. at
`26.) Although Brownstein submitted an affidavit de-
`scribing his work on the LCID, and copies of text pur-
`porting to be relevant computer code, the District
`Court rejected the affidavit as “conclusory” and the
`code as “not self-evident.” (App. at 29.) For those
`
`
`1 We also reversed an order by the District Court that can-
`
`celled certain copyright registrations. Brownstein, 742 F.3d at 58,
`63, 77. That issue is not relevant to this appeal.
`
`
`
`App. 5
`
`reasons, the court found that Brownstein failed to sus-
`tain his burden of production, and again granted sum-
`mary judgment to the defendants. This timely appeal
`followed.2
`
`
`
`II. DISCUSSION
`Brownstein raises three issues on appeal. First, he
`
`argues that the District Court erroneously interpreted
`the Settlement Agreement as “sever[ing]” or “decon-
`struct[ing]” the LCID, (Opening Br. at 28–29), in con-
`travention of established copyright principles, and that
`defendants’ continued use of Lindsay’s rules, by itself,
`entitles him to compensation.
`
`It is true that “[t]he authors of a joint work are co[-
`
`]owners of copyright in the work,” 17 U.S.C. § 201(a),
`and that each joint author acquires “an undivided own-
`ership in the entire work, including all the contribu-
`tions contained therein.” Nimmer on Copyright § 6.03
`(2019); see 17 U.S.C. § 101 (“A ‘joint work’ is a work pre-
`pared by two or more authors with the intention that
`their contributions be merged into inseparable or inter-
`dependent parts of a unitary whole.” (emphasis
`added)). But as we previously noted, the EDS was an
`“independent work,” of which Lindsay was the “sole au-
`thor.” Brownstein, 742 F.3d at 59. And merely using the
`EDS in the LCID did not affect Lindsay’s ownership of
`
`
`2 The District Court had jurisdiction under 28 U.S.C.
`
`§§ 1331, 1338, and 1367. We have jurisdiction under 28 U.S.C.
`§ 1291, and again exercise plenary review over the District
`Court’s grant of summary judgment. Brownstein, 742 F.3d at 64.
`
`
`
`App. 6
`
`her rules, nor give Brownstein any rights in them. Cf.
`Greene v. Ablon, 794 F.3d 133, 153 (1st Cir. 2015) (not-
`ing that a work “may be both joint and derivative, with
`[the original work’s author] owning the copyright in
`the underlying work . . . and co-owning the copyright
`in the derivative work”). So the District Court did not
`split the joint-work atom; instead, it correctly inter-
`preted the Settlement Agreement as abrogating both
`parties’ interest in the LCID. And it was not improp-
`erly depriving Brownstein of any rights in the EDS,
`since he had none to begin with.
`
`Second, Brownstein argues that the Settlement
`
`Agreement did not transfer any copyrights, but merely
`evidenced the parties’ decision to “waive[ ] any rights
`of enforcement they might have had” against the other.
`(Opening Br. at 43.) But this argument ignores lan-
`guage in the Settlement Agreement acknowledging
`that List Services and its executives were the “sole
`owner(s)” of “a certain computer program concerning
`ethnic selections” that List Services was “presently us-
`ing.” (App. at 317-18) (emphasis added). Lindsay and
`Brownstein weren’t agreeing to cooperatively share
`the pre-Settlement-Agreement LCID with List Ser-
`vices; they were recognizing they no longer “owne[d]”
`any of it, including its copyrights.
`
`Third, and finally, Brownstein argues that the Dis-
`
`trict Court ignored evidence of his post-Settlement-
`Agreement authorship contribution to the LCID. We
`need not address this issue, since even if Brownstein
`co-authored some post-Settlement-Agreement version
`of the LCID, he has failed to demonstrate that Lindsay
`
`
`
`App. 7
`
`and E-Tech profited from that version, or a derivative
`thereof, in May 2010 or afterward. His complaint con-
`cedes that any code he authored was “phased out” of
`defendants’ programs long ago. (App. at 231.) As noted
`above, he never had any rights in the EDS itself, so
`continued use of those rules entitles him to nothing.
`And he does not otherwise explain, or offer evidence to
`show, how defendants’ post-May-2010 product was de-
`rivative of any earlier one.
`
`
`
`III. CONCLUSION
`As we noted in our previous opinion, Brownstein
`
`could prevail only if he demonstrated that defendants
`profited either from a work he jointly authored, or from
`a derivative. Brownstein, 742 F.3d at 67–68. Because
`he has done neither, his claims fail. We will therefore
`affirm the District Court’s grant of summary judg-
`ment.
`
`
`
`
`
`
`
`
`App. 8
`
`UNITED STATES COURT OF APPEALS
`FOR THE THIRD CIRCUIT
`-----------------------------------------------------------------------
`No. 18-3711
`-----------------------------------------------------------------------
`PETER BROWNSTEIN,
`Appellant
`v.
`TINA LINDSAY; ETHNIC TECHNOLOGIES, LLC
`-----------------------------------------------------------------------
`On Appeal from the United States District Court
`for the District of New Jersey
`(No. 3-10-cv-1581)
`District Judge: Hon. Freda L. Wolfson
`-----------------------------------------------------------------------
`Argued November 20, 2019
`
`Before: CHAGARES, MATEY, and FUENTES,
`Circuit Judges
`-----------------------------------------------------------------------
`JUDGMENT
`-----------------------------------------------------------------------
`This cause came to be considered on the record
`
`from the United States District Court for the District
`of New Jersey, and was argued on November 20, 2019.
`On consideration whereof, it is now hereby OR-
`
`DERED and ADJUDGED by this Court that the or-
`der of the District Court entered on November 28,
`
`
`
`App. 9
`
`2018, is hereby AFFIRMED. Costs to be assessed
`against Appellant.
`
`All of the above in accordance with the Opinion of
`
`this Court.
`
`ATTEST:
`s/ Patricia S. Dodszuweit
`Clerk
`
`DATED: May 18, 2020
`Costs taxed in favor of Appellees Ethnic Technologies
`LLC and Tina Lindsay as follows:
`
`Brief
`Appendix
`TOTAL
`
`$489.50
`$2,052.75
`$2,542.25
`
`
`
`
`
`
`
`App. 10
`
`*NOT FOR PUBLICATION*
`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
`
`
`PETER BROWNSTEIN,
`
`
`
`
` Plaintiff,
`v.
`TINA LINDSAY, et al.,
`
`
`
`
`
` Defendants.
`
`:
`:
`:
`:
`:
`:
`:
`:
`
`
`WOLFSON, District Judge:
`
`Civ. Action No.:
`10-1581 (FLW)
`OPINION
`
`(Filed: Nov. 28, 2018)
`
`litigation, Plaintiff Peter
`In this protracted
`
`Brownstein (“Plaintiff ” or “Brownstein”) brought this
`case under the Copyright Act seeking a declaratory
`judgment of joint authorship of an ethnic identification
`system that he purportedly created with defendant
`Tina Lindsay (“Lindsay”).1 A trial was held in this case;
`however, before a verdict was reached by the jury,
`Judge Pisano, inter alia, granted judgment as a matter
`of law on the joint authorship claim in favor of Lindsay
`and co-defendant Ethnic Technologies, LLC (collec-
`tively, “Defendants”).2 On appeal, the Third Circuit re-
`versed that decision in Brownstein v. Lindsay, 742 F.3d
`
`
`1 This matter was initially assigned to the now-retired Hon.
`
`Joel A. Pisano, U.S.D.J. The case was transferred to this Court
`after the Third Circuit reversed Judge Pisano’s trial decision
`granting judgment as a matter of law.
`2 While other substantive decisions were made, the only rel-
`
`evant one to this Opinion is Judge Pisano’s Rule 50(a) decision.
`
`
`
`App. 11
`
`55 (3d Cir. 2014). After remand, I directed Plaintiff to
`amend his complaint consistent with the undisputed
`facts that were determined during the first trial, which
`were recounted by the circuit court in its published de-
`cision. Upon amendment, Defendants moved for dis-
`missal pursuant to Fed. R. Civ. P. 12(b)(6), which
`motion this Court converted to summary judgment.
`Subsequently, the parties filed supplemental submis-
`sions. For the reasons set forth herein, Defendants’ mo-
`tion for summary judgment is GRANTED.
`
`
`
`BACKGROUND and PROCEDURAL HISTORY
`I. The Ethnic Determinant System Copyright
`
`At the outset, I note that the following facts are
`
`undisputed unless otherwise noted, and to understand
`the complexity of this case, I start from the filing of the
`Complaint in 2010.3 In March 2010, Brownstein
`brought this suit seeking a declaratory judgment that
`
`
`3 Since the parties are well acquainted with the facts after
`
`years of litigation, I need not cite to the record with regards to the
`undisputed historical facts of this case. Importantly, these facts
`are also well documented in various decisions, including the Third
`Circuit’s opinion in Brownstein. Furthermore, I note that Plaintiff
`takes issue with certain factual findings made during the first
`trial and in subsequent decisions, including Brownstein, and ar-
`gues that this Court should not adopt those facts; however, Plain-
`tiff cannot now re-litigate issues that have already been decided.
`Rather, I am bound by those determinations. See Pub. Interest
`Research Grp. of New Jersey, Inc. v. Magnesium Elektron, Inc.,
`123 F.3d 111, 116 (3d Cir. 1997) (“The law of the case doctrine
`directs courts to refrain from re-deciding issues that were re-
`solved earlier in the litigation.”).
`
`
`
`App. 12
`
`he is a co-author of a joint work for which Lindsay reg-
`istered a copyright in 1996. This copyright, also known
`as the Ethnic Determinant System (“EDS”), developed
`rules for computer programs to predict and categorize
`people’s names by ethnicity.
`
`At the time the EDS was conceived, Brownstein
`
`and Lindsay worked together at Future Prospective
`Clients, a direct mailing list company, that later
`changed its name to List Services Direct, Inc. (“LSDI”).
`Because of their working relationship, in January
`1994, Lindsay enlisted Brownstein’s expertise to turn
`her rules into computer codes. Brownstein, for his part,
`created a number of computer programs, which were
`known as the ETHN programs, that, inter alia, con-
`verted lists of names into data format and turned EDS
`rules into code. The combined product of the EDS and
`the ETHN programs was named the Lindsay Cultural
`Identification Determinant (“LCID”). In that regard, as
`the Third Circuit has recognized, “Lindsay was the sole
`author of the EDS, as an independent work of the
`LCID, Brownstein was the sole author of the ETHN
`programs, as another independent work of the LCID,
`and they both had an equal authorship interest in the
`LCID as a joint work of the EDS and ETHN programs.”
`Brownstein, 742 F.3d at 59.
`
`In June 1996, Lindsay and Brownstein founded
`
`TAP Systems, Inc. (“TAP”) to commercialize the LCID.
`In that regard, the LCID was licensed to TAP, and in
`turn, the company licensed the program to its custom-
`ers. Each of them owned TAP equally. However, despite
`operating TAP, Lindsay and Brownstein continued to
`
`
`
`App. 13
`
`work at LSDI. Earlier that year, in February 1996,
`Lindsay, alone, received her first copyright registration
`for the EDS (the “872 registration”). In December 1996,
`Lindsay also obtained a second copyright registration
`for an updated version the EDS (the “127 registra-
`tion”), which was the derivative work of the first ver-
`sion. With that registration, Lindsay included a copy of
`Brownstein’s ETHN programs and referenced a com-
`puter process and codes associated with the copyright.
`
`In late 1996, Lindsay and LSDI disputed the own-
`
`ership of the EDS copyrights. LSDI demanded that
`both the EDS and the LCID were owned by the com-
`pany since Lindsay and Brownstein created those
`works while working at LSDI. Because Lindsay vehe-
`mently disagreed, tension between LSDI management
`and the partners intensified to a point where both
`Lindsay and Brownstein resigned from LSDI in June
`1997. Thereafter, LSDI brought a lawsuit against, inter
`alia, Lindsay, Brownstein and Tap over Lindsay’s cop-
`yrighted works, claiming that they were created as
`works for hire. The suit eventually settled in Septem-
`ber 1998 (the “1998 LSDI Settlement Agreement”).
`Significantly, the terms of that settlement agreement
`substantially impacted the rights of the parties in this
`case vis-à-vis the EDS copyrights, particularly Brown-
`stein. The pertinent portions of the 1998 LSDI Settle-
`ment Agreement are set forth as follows:
`
`1. The parties acknowledge and agree that
`LSDI is presently using a computer program
`concerning ethnic selections
`(hereinafter
`called the “LSDI Program”). Lindsay, Nelson,
`
`
`
`App. 14
`
`Brownstein, TAP, CMR4 and ET agree not to
`claim ownership or any of the rights to the
`LSDI program, any aspect thereto, nor to
`any modifications, nor any derivative work
`thereof, and agree not to make any claim that
`the LSDI Program or any aspect thereto, any
`modifications or derivative work thereof vio-
`lates any of their rights, whether involving,
`but not limited to copyright, trademark, trade
`secret, proprietary property, or infringement
`of any of the foregoing, and agree to release
`LSDI and Raskin5 from any such claims that
`may exist, except as otherwise provided
`herein. Lindsay, Nelson, Brownstein, TAP,
`CMR and ET acknowledge that Raskin and/or
`LSDI are/is the sole owners(s) of the LSDI
`Program.
`
`2. The parties acknowledge and agree that all
`parties have made claim to the right to exclu-
`sive ownership of EDS, a work entitled “An
`Ethnic Determinant System – Knowledge and
`Rule/Exception Basis”
`(hereinafter called
`“EDS”), any therefore, and derivative work
`thereof. As part of this settlement, LSDI and
`Raskin disclaim any ownership to EDS and
`any derivative work thereof, except as other-
`wise provided herein.
`
`
`4 Consumer Marketing Research, Inc., also known as CMR,
`
`was one of Lindsay’s former employers. Ginger Nelson was one of
`CMR’s executives. I will further explain these parties, infra.
`5 Tom Raskin was an executive at LSDI.
`
`
`
`
`App. 15
`
`3. The parties acknowledge and agree that Tina
`Lindsay obtained a Certificate of Registration
`. . . for EDS which may be called LCID.
`*
`
` *
`
` *
`9. Lindsay, ET, TAP, CMR, Nelson and Brown-
`stein disclaim any ownership to the LSDI
`Program and any aspect thereto, any modifi-
`cations and derivative work thereof, provided
`any such derivative work is independently de-
`veloped by LSDI or Raskin, or is obtained
`with the permission of the other parties to
`this settlement Agreement who have the own-
`ership of such derivative work of EDS, subject
`to the agreement that none of the parties to
`this Settlement Agreement is under any obli-
`gation to provide LSDI with anything further
`than that which LSDI has in its possession as
`of the date hereof.
`
`10. LSDI and Raskin relinquish and disclaim any
`ownership claims to those items set forth in
`paragraphs 2,3,4,5, and 6 above, and any as-
`pect thereof, any modification and derivative
`work thereof, except as provided for herein.
`*
`
` *
`
` *
`13. Lindsay, TAP Nelson, Brownstein, CMR and
`ET relinquish any claims they have against
`LSDI or Raskin regarding the use of the LSDI
`Program, EDS and E-Tech to the extent pres-
`ently in the possession of LSDI or Raskin, and
`subject to the provisions of paragraph 19 or
`any program used or owned by any of them,
`including those items set forth in paragraphs
`2, 3, 4, 5, or 6 or any aspect thereof, any
`
`
`
`App. 16
`
`modification or derivative work thereof or any
`aspect thereto by LSDI and/or Raskin, unless
`in violation of this settlement agreement.
`
`14. LSDI and Raskin relinquish any claims they
`have against Lindsay, ET, TAP, CMR, Nelson
`and Brownstein regarding the use of EDS or
`any program used or owned by LSDI or
`Raskin or any derivative work thereof or any
`aspect thereof by Lindsay, ET, TAP, CMR, Nel-
`son and Brownstein unless in violation of this
`Agreement.
`
`LSDI Settlement Agreement, pp. 1-4. Essentially,
`based on these provisions, Lindsay retained sole own-
`ership of the EDS, but Lindsay and Brownstein both
`relinquished any interest in the programs that the pair
`had created while employed at LSDI, including any de-
`rivative works based upon those programs. In other
`words, pursuant to the terms of the settlement, Brown-
`stein and Lindsay could no longer utilize the version of
`the LCID program developed by them while employed
`at LSDI.
`
`
`II. Lindsay and Brownstein’s Business Ventures
`
`Around the same time Lindsay and Brownstein
`
`left their employment at LSDI, Lindsay began to pur-
`sue new business ventures to promote the LCID. In
`late 1997, TAP partnered with CMR to create a new
`business venture. In that connection, prior to the LSDI
`settlement, the parties entered into a licensing agree-
`ment in September 1997, wherein TAP and CMR
`agreed to combine CMR’s then-technology with the
`
`
`
`App. 17
`
`LCID, later referred to as “E-Tech.” The new business
`entity formed by the combination of CMR and TAP was
`known as Ethnic Technologies, LLC (“ET”), a named
`defendant in this case. Thereafter, ET began licensing
`E-Tech to other businesses. In December 2000, after
`the LSDI settlement, TAP and CMR revised their
`agreement and again set forth the fact that the two
`companies have combined TAP’s assets with CMR’s as-
`sets to form ET. After the signing of this agreement, ET
`continued to license E-Tech to other companies, with
`Plaintiff signing certain licensing agreements between
`2000-2005.
`
`
`III. The Lawsuits
`
`The business relationship between Lindsay and
`
`Brownstein deteriorated some time after their joint
`business ventures. As a result, Brownstein left ET in
`May 2009, and filed an oppressed shareholder lawsuit
`in New Jersey state court against Lindsay and ET. This
`litigation was settled in May 2010. Pursuant to the
`2010 agreement, 1) the terms of that settlement would
`not affect Brownstein’s right to pursue the current
`lawsuit, which was pending; 2) Brownstein agreed to
`relinquish his interests in ET, and 3) released the de-
`fendants (Lindsay and ET) and Brownstein from re-
`lated claims. Specifically, Brownstein agreed to
`relinquish his right, title, and interest as a “share-
`holder, officer, employee or director in TAP or as man-
`ager, partner, member, officer, director or employee of
`E-Tech.” 2010 Settlement Agreement, ¶ 2.6. During
`this period, Brownstein filed for his own copyright
`
`
`
`App. 18
`
`registrations in December 2009, which purportedly
`covered his ETHN programs.
`
`In March 2010, 14 years after the date of Lindsay’s
`
`copyright registrations, Brownstein filed the present
`lawsuit seeking to protect his joint authorship of the
`LCID. In his First Amended Complaint, the operative
`version that proceeded to trial, Plaintiff states that
`“this is an action brought under the federal copyright
`law seeking a declaratory judgment that plaintiff Peter
`Brownstein is the co-author of a joint work for which
`defendant Tina Lindsay registered two copyrights in
`1996 and that he is entitled to continue receiving a rea-
`sonable royalty for the exploitation of the joint work.”
`First Am. Compl., ¶1. In other words, the gist of this
`case – prior to trial – centered on Plaintiff ’s claim that
`he should be declared a joint author of Lindsay’s 1996
`copyrights associated with the EDS.6
`
`The case proceeded to a jury trial before Judge Pi-
`
`sano. However, at the end of Plaintiff ’s case, and prior
`to the defense case, Defendants moved for judgment as
`a matter of law pursuant to Rule 50, which was
`granted. Specifically, Judge Pisano rejected the claim
`that Brownstein was a joint author of the EDS based
`on statute of limitations grounds. In that regard, it was
`found that because Brownstein had adequate notice of
`his authorship claim more than three years prior to
`
`6 Plaintiff also asserted three separate counts, i.e., construc-
`
`tive trust, resulting trust and replevin, that were dismissed at
`trial by Judge Pisano. Those counts are not at issue here.
`
`
`
`
`
`App. 19
`
`filing his complaint, under the Copyright Act, he was
`timed barred from bringing suit.7 Plaintiff appealed.
`
`
`IV. The Third Circuit’s decision in Brownstein
`
`Regarding the joint authorship claim, the Third
`
`Circuit addressed two factual questions: 1) whether
`Brownstein is a co-author of the LCID; and 2) whether
`his claim is barred by the statute of limitations. With
`respect to the first question, the circuit court, relying
`on a concession made at oral argument by defense
`counsel, found that Brownstein and Lindsay were co-
`authors of the LCID up until its 1997 iteration.8 The
`Third Circuit reasoned:
`
`This concession means that Appellees admit
`that Brownstein contributed a non-trivial
`amount of creative expression to the LCID
`through his work on the ETHN programs and
`that Lindsay intended for the EDS to be com-
`bined with the computer code he drafted to
`
`
`7 Judge Pisano also granted judgment in favor of Defendants
`
`on their counterclaim, which claim sought to cancel Brownstein’s
`copyright registered in 2009. The Third Circuit reversed, reason-
`ing that courts have “no authority to cancel copyright registra-
`tions because there is no statutory indication whatsoever that
`courts have such authority.” Brownstein, 742 F.3d at 75. The can-
`cellation issue is not relevant here.
`8 After remand, the parties, and this Court, questioned the
`
`legitimacy of this particular concession by counsel. Indeed, De-
`fendants maintained that the circuit court did not – and cannot –
`make factual findings in the context of an appeal proceeding. Not-
`withstanding the plausibility of such an argument, I need not ad-
`dress this issue, because this factual determination is ultimately
`immaterial to the resolution of the disputes raised on this motion.
`
`
`
`App. 20
`
`form the LCID. Moreover, this framework con-
`cedes that the EDS and the ETHN programs
`are interdependent works, which comports
`with Lindsay’s assertions. In both the 1997
`Software License and her testimony at trial,
`she admitted that her rules and Brownstein’s
`code were inseparable. (App. 1050 (Trial Tr.
`256:1 (“[The] LCID had to have programs.”)).)
`In Schedule A of the license, she wrote that
`the “series of computer programs” and “sys-
`tem data” of the LCID were “irrevocably
`entwined”. (App. 668 (Software License Agree-
`ment, Schedule A).)
`
`Brownstein, 742 F.3d at 65.
`
`The Third Circuit went on to find that, as a matter
`
`of law, because the EDS and the LCID are distinct
`works with distinct copyrights, Lindsay’s copyright
`registrations in 1996 did not cover the LCID or Brown-
`stein’s own work in the ETHN programs. The court re-
`jected the argument that by submitting Brownstein’s
`code in the form of a deposit copy with her copyright
`application did not mean that Lindsay could unilater-
`ally claim rights to the ETHN programs or the LCID.
`Indeed, the court found that “Brownstein [ ] remain[ed]
`a co-author and co-owner [of the LCID] because copy-
`right registration does not establish the copyright. . . .
`Consequently, Lindsay’s copyright registrations, if any-
`thing, are merely placeholders for the indivisible joint
`rights she inherently had in the EDS and the LCID
`with Brownstein.” Id. at 67.
`
`
`
`App. 21
`
`Following that discussion, the Third Circuit made
`
`certain legal conclusions regarding Brownstein’s own
`work and contribution to the LCID that are critical to
`the motion here:
`
`Brownstein had copyrights exclusively in his
`ETHN programs as an independent work and
`non-exclusively in the LCID as a co-author. In
`addition, he also had copyrights to whatever
`new generations of the ETHN programs and
`LCID that he created as “derivative works” of
`his first set of ETHN programs and the LCID.
`Therefore, although LSDI retained rights to
`the ETHN programs that were considered the
`“LSDI Program” in the 1998 Settlement
`Agreement, the subsequent generations of
`ETHN programs that Brownstein developed
`[would remain] under his ownership because
`they were derivative works of the LSDI Pro-
`gram. Brownstein’s 2009 copyright registra-
`tions would, therefore, cover any post-1998
`generations of the ETHN programs that were
`not covered by the 1998 Settlement Agree-
`ment with LSDI.
`
`Id. Importantly, the court left open the very factual
`question dispositive on this motion: to what extent did
`the 1998 LSDI Settlement Agreement abrogate
`Brownstein’s ownership of the pre-1998 generations of
`the LCID. More importantly, the court further noted
`that while it is possible that the later versions of the
`LCID continued to employ the code created by Brown-
`stein, it is incumbent upon him to make that eviden-
`tiary showing. Id.
`
`
`
`App. 22
`
`After finding that Plaintiff is a co-author of the
`
`LCID, the court discussed the issue of statute of limi-
`tations. Although this part of the Third Circuit’s anal-
`ysis is of little relevance here, I will nevertheless
`summarize it. Judge Pisano found that the operative
`statute of limitations started to run when Lindsay reg-
`istered her copyrights in 1996, which also served as
`constructive notice to Plaintiff. Judge Pisano also
`found that Brownstein not only had Lindsay’s copy-
`right registrations in his possession but that he also
`had “actual knowledge” through the series of licensing
`agreements signed by Plaintiff, all of which showed
`that Lindsay was holding herself out as the sole author
`of the LCID. The circuit court disagreed. First, the
`court held that a copyright registration, standing
`alone, does not serve as repudiation of joint author-
`ship. Id. at 71. Second, the court determined a jury
`question remains as to whether any of the agreements
`signed by Plaintiff, e.g., the 1997 Software License, the
`1997 Agreement the 2000 Agreement, the 2010 state
`court settlement agreement and ET’s licensing agree-
`ments between 2000-2005, served as an express repu-
`diation of Brownstein’s authorship by Lindsay.9 Id. at
`75.
`V. The Third Amended Complaint
`
`Following remand, Plaintiff ’s Complaint, as it was
`
`pled, was no longer viable because Plaintiff ’s claim
`
`9 After the filing of the Third Amended Complaint, in lieu of
`
`an answer, Defendants moved to dismiss Plaintiff ’s declaratory
`judgment claim on the merits. They did not, however, move on
`statute of limitations grounds.
`
`
`
`App. 23
`
`sought a declaration of joint authorship over the 1996
`copyrighted works registered by Lindsay. See Am.
`Compl., ¶¶ 1, 29. Based on the Brownstein decision, the
`Third Circuit found that the 1996 registered works,
`i.e., EDS, belonged to Lindsay. Thus, the remaining
`question is whether any derivatives of the LCID, which
`is the joint work of Brownstein and Lindsay, continued
`to being utilized by ET without compensating Plaintiff.
`That is the theory of the case Plaintiff was permitted
`to amend. In his Third Amended Complaint, which is
`the operative Complaint on this motion, Plaintiff
`changed course. In the newly amended declaratory
`judgment claim, Plaintiff alleges that the “LCID/TAP
`System was a joint work, incorporating the encoding
`rules and codes authored by Lindsay and the programs
`written by Brownstein. Brownstein and Lindsay are
`the co-authors of the copyrighted work as provided for
`by the Copyright Act, 17 U.S.C. § 101, et seq.” Third Am.
`Compl., ¶ 17. Brownstein alleges that Lindsay and ET
`have expressly repudiated Brownstein’s joint author-
`ship of the copyrights in the LCID/TAP System and its
`derivatives and have failed to account . . . to Brown-
`stein for the profits derived from the joint work in di-
`rect conflict with ownership rights.”10 Id. at ¶ 19.
`
`After Brownstein filed his Third Amended Com-
`
`plaint, rather than answering, Defendants moved for
`dismissal under Rule 12(b)(6). Because the facts are
`largely undisputed following remand, I converted the
`
`10 While Plaintiff also included a new copyright infringement
`
`claim, he voluntarily withdrew that claim on this motion, and in
`an Order dated August 6, 2018, I dismissed that claim.
`
`
`
`App. 24
`
`motion to a summary judgment motion and requested
`the parties to submit any additional briefing or evi-
`dence. Having considered supplemental submissions, I
`conclude that Plaintiff has failed t
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