Case 2:15-cv-00741-TS-PMW Document 62 Filed 04/18/17 Page 1 of 13
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF UTAH
`
`MEMORANDUM DECISION AND
`ORDER DENYING PLAINTIFF’S
`MOTION FOR LEAVE TO AMEND
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`
`
`Case No. 2:15-CV-741 TS
`
`District Judge Ted Stewart
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`
`ESTHER ISRAEL,
`
`
`Plaintiff,
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`
`v.
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`UNIVERSITY OF UTAH, DONALD
`STEVEN STRASSBERG, JORDAN
`ELIZABETH RULLO, JULIA
`MACKARONIS, KELLY KINNISH and
`MICHAEL MINER,
`
`
`Defendants.
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`This matter is before the Court on Plaintiff’s Motion for Leave to File an Amended
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`
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`Complaint. For the reasons discussed below, the Court will deny the Motion.
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`I. BACKGROUND
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`Esther Israel (“Plaintiff”) filed a Complaint against the University of Utah, Donald
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`Steven Strassberg, Jordan Elizabeth Rullo, Julia Mackaronis, Kelly Kinnish, and Michael Miner
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`(collectively, “Defendants”) on October 16, 2015. Plaintiff filed a Motion for Leave to Amend
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`on September 26, 2016, seeking to add an additional alleged infringing publication titled
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`“Beholder and Beheld: A Multilevel Model of Perceived Sexual Appeal” (the “Publication”) and
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`three additional state-law claims of: (1) breach of fiduciary duty/implied warranty of good faith
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`against the University of Utah and Dr. Strassberg; (2) promissory estoppel; and (3) violation of
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`the common law right of publicity against the University of Utah, Dr. Strassberg, and Dr. Rullo.
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`Defendants oppose Plaintiff’s Motion, claiming the addition of these claims would be futile.
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`Case 2:15-cv-00741-TS-PMW Document 62 Filed 04/18/17 Page 2 of 13
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`II. MOTION TO AMEND STANDARD
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`Generally, once a responsive pleading is filed, “a party may amend its pleading only with
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`the opposing party’s written consent or the court’s leave.”1 Federal Rule of Civil Procedure
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`15(a) specifies that “[t]he court should freely give leave when justice so requires.”2 The
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`Supreme Court has indicated that leave sought should be given unless “undue delay, bad faith or
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`dilatory motive on the part of the movant, repeated failure to cure deficiencies by amendments
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`previously allowed, undue prejudice to the opposing party by virtue of allowance of the
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`amendment, [or] futility of [the] amendment”3 is present. “A proposed amendment is futile if
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`the complaint, as amended, would be subject to dismissal.”4
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`III. DISCUSSION
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`To resolve Plaintiff’s Motion, the Court must consider whether amendment would be
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`futile. The Court will consider Plaintiff’s proposed additional claims in turn.
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`A.
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`COPYRIGHT INFRINGEMENT
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`In order to establish copyright infringement, two elements must be met: (1) ownership of
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`a valid copyright; and (2) copying of constituent elements of the work that are original.5
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`Defendants assume for the purposes of this Motion that Plaintiff has a valid copyright in
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`her work. Thus, Plaintiff must sufficiently allege that Defendants copied constituent elements of
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`her work that are original. To prove copying, Plaintiff must establish that the Defendants copied
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`1 Fed. R. Civ. P. 15(a)(2).
`2 Id.
`3 Foman v. Davis, 371 U.S. 178, 182 (1962).
`4 Jefferson Cty. Sch. Dist. No. R-1 v. Moody’s Inv’rs Servs., Inc., 175 F.3d 848,
`859 (10th Cir. 1999).
`5 Blehm v. Jones, 702 F.3d 1193, 1199 (10th Cir. 2012).
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`Case 2:15-cv-00741-TS-PMW Document 62 Filed 04/18/17 Page 3 of 13
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`Plaintiff’s work as a factual matter and, as a mixed issue of fact and law, that the elements copied
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`were protected.6
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`To prove copying of legally protectable material, a plaintiff must demonstrate that there
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`is a substantial similarity between the legally protectable elements of the original work and
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`allegedly infringing work.7 In order to decide whether two works are substantially similar, the
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`court asks “whether the accused work is so similar to the plaintiff’s work that an ordinary
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`reasonable person would conclude that the defendant unlawfully appropriated the plaintiff’s
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`protectable expression by taking material of substance and value.”8 To determine whether the
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`defendant has copied legally protectable material, courts often utilize the “abstraction-filtration-
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`comparison” analysis.9 This analysis is described as follows:
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`At the abstraction step, we separate the ideas (and basic utilitarian functions),
`which are not protectable, from the particular expression of the work. Then, we
`filter out the nonprotectable components of the product from the original
`expression. Finally, we compare the remaining protected elements to the
`allegedly copied work to determine if the two works are substantially similar.10
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`Plaintiff states that the Publication “utilizes the Original Material as well as an
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`unpublished rating system (e.g., view, explicitness, picture quality and target population) Israel
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`placed in her Original Material to evaluate the pictures in her master’s thesis study; thus,
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`6 Jacobsen v. Deseret Book Co., 287 F.3d 936, 942 (10th Cir. 2002).
`7 Id. at 942–43.
`8 Id. at 943 (quoting Country Kids ‘N City Slicks, Inc. v. Sheen, 77 F.3d 1280, 1288 (10th
`Cir. 1996)).
`9 Id. at 943 n.5.
`10 Id. (quoting Country Kids ‘N City Slicks, Inc., 77 F.3d at 1284–85).
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`Mackaronis, Strassberg, Cundiff and Cann created a derivative work that is based on Israel’s
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`Original Material.”11
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`Accordingly, using the abstraction-filtration-comparison test, the Court will analyze: (1)
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`the Plaintiff’s Original Materials, which consists of study pictures,12 study text,13 and computer
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`syntax;14 and (2) the unpublished rating system.
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`1.
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`Original Materials
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`The first step of the abstraction-filtration-comparison analysis is to separate the ideas
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`from the expression. The pictures within Plaintiff’s Original Materials were all taken from
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`“commercially available magazines . . . , websites . . . and clothing catalogues.”15 Because the
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`pictures were taken from these sources, Plaintiff does not have any copyright in the individual
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`pictures. However, Plaintiff’s “original selections or arrangements of [unprotected] elements
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`may be protectable.”16
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` Next, the text of the Original Materials appears to be copyrightable and protectable
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`material. It is well established that an author’s expression of ideas are protectable, however, the
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`ideas themselves are not protectable.17 Applying this to the text of the Original Materials, the
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`11 Docket No. 37 Ex. 1 ¶36.
`12 Docket No. 43 Ex. 1.
`13 Id. Ex. 2.
`14 Id. Ex. 3.
`15 Id. Ex. 4, at 52.
`16 Savant Homes, Inc. v. Collins, 809 F.3d 1133, 1139 (10th Cir. 2016).
`17 Feist Publication, Inc. v. Rural Telephone Servs. Co., Inc., 499 U.S. 340, 350
`(1991).
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`idea of a voluntary survey based on sexuality is not protectable. However, similar to Plaintiff’s
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`arrangement of pictures, her expression is protectable.
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`Finally, the computer syntax of the Original Materials may have protectable elements.
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`However, Plaintiff’s proposed Amended Complaint does not provide enough information for the
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`Court to gauge whether or not protectable elements are present.
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`The next step in the abstraction-filtration-comparison analysis is to compare the
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`remaining protected elements to the allegedly copied work to determine if the two works are
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`substantially similar. Copyright law only protects against the copying of expression, but ideas
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`themselves, or expression that falls under the “merger doctrine” is not copyrightable.18 “Under
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`the merger doctrine, copyright protection is denied to expression that is inseparable from or
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`merged with the ideas, processes, or discoveries underlying the expression.”19 Similarly, under
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`the scenes a faire doctrine, protection is denied to expressions that are “standard, stock, or
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`common to a particular topic or that necessarily follow from a common theme or setting.”20
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`Comparing the Original Materials pictures to the Publication, substantial similarity is not
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`met. The Publication used 34 photographs of men and 34 photographs of women from a variety
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`of media sources, similar to the Original Materials.21 However, Plaintiff has not shown that the
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`Publication copied Plaintiff’s protectable selection and arrangement of photographs. The mere
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`idea of using photographs of men and women from media sources in a study about sexuality is
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`not protectable expression. Thus, there is no infringement.
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`18 Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 838 (10th Cir. 1993).
`19 Id.
`20 Id.
`21 Docket No. 42 Ex. B, at 3.
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` Next, comparing the Original Materials text to the Publication, substantial similarity is
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`also not met. As already established, Plaintiff has protection in the arrangement and selection of
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`her text. The Publication does not contain any verbatim copying of the arrangement and
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`selection from the Original Materials. While there may be a few sentences that are similar, this
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`does not establish infringement. Any similarities are due to the fact that both papers concern
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`similar subject matter and used similar testing methods.
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`Finally, substantial similarity is not present between the Original Materials computer
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`syntax and the Publication. Computer syntax may have potentially protectable elements;
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`however, Plaintiff does not provide enough information as to what her computer syntax entails,
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`or what the protectable elements of that computer syntax may be. Nor has she demonstrated that
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`Defendants used substantially similar computer syntax in the Publication. Thus, there can be no
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`infringement
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`Based on the above, the Court finds that Plaintiff has failed to adequately allege that the
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`Publication copied any protected elements of Plaintiff’s Original Materials. Therefore, Plaintiff
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`fails to state a claim, rendering amendment futile.
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`2.
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`Unpublished Rating System
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`Plaintiff does not definitively define what her “unpublished rating system” entails, but
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`rather gives examples as to what is considered her unpublished rating system. These examples
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`include things such as “view, explicitness, picture quality, and target population.”22 Plaintiff
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`alleges that she placed this unpublished rating system in her Original Materials to help evaluate
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`22 Docket No. 37 Ex. 1 ¶36.
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`the pictures in her master’s thesis study.23 Plaintiff’s unpublished rating system is an idea, rather
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`than protectable expression, and therefore not subject to copyright protection. Even if it were
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`protectable, Defendants did not copy Plaintiff’s work as a factual matter because there is no
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`substantial similarity between the Publication and Plaintiff’s “unpublished rating system.”
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`Therefore, Plaintiff fails to state a claim, rendering it futile. Thus, Plaintiff’s leave to amend for
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`the addition of the Publication will not be permitted.
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`B.
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`LANHAM ACT
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`Plaintiff alleges that the Publication “failed to appropriat[e] credit [to] Plaintiff for the
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`Original Material published in [the Publication] under their names.”24 Plaintiff asserts that this
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`violates the Lanham Act.
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`15 U.S.C. § 1125(a) states that:
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`[a]ny person who, on or in connection with any goods or services . . . uses in
`commerce any word, term, name, symbol, or device, or any combination thereof,
`or any false designation of origin, false or misleading description of fact, or false
`or misleading representation of fact, which is likely to cause confusion . . .
`mistake . . . or to deceive as to the affiliation, connection, or association of such
`person with another person, or as to the origin . . . .25
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`In order to prevail on a claim under the Lanham Act, the following elements must be met:
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`(1) the plaintiff has a protectable interest in the mark; (2) the defendant has used “an identical or
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`similar mark” in commerce; and (3) the defendant’s use is likely to confuse consumers.26
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`23 Id.
`24 Id. ¶ 55.
`25 15 U.S.C.A. § 1125(a) (West 2017).
`26 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229, 1242 (10th Cir. 2013).
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`Here, Plaintiff has not alleged that she possess a protectable mark. In addition, Plaintiff
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`has failed to show that failing to use her name in the Publication constitutes use in commerce
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`likely to cause confusion. Therefore, this claim fails.
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`C.
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`STATE-LAW CLAIMS
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`Plaintiff seeks to add various state-law claims. Defendants argue that Plaintiff’s claims
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`are barred by the Governmental Immunity Act of Utah. “Compliance with the Immunity Act is a
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`prerequisite to vesting a district court with subject matter jurisdiction over claims against
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`governmental entities.”27 Defendant argues that the addition of these state-law claims would be
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`futile for three reasons: (1) the Immunity Act bars Plaintiff’s claims; (2) Plaintiff did not file the
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`required notice of claim under the Immunity Act; and (3) Plaintiff’s proposed amendment was
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`not timely filed under the Immunity Act.
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`1.
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`Governmental Immunity Act of Utah
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`In order to determine whether a government entity is immune from suit for injury
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`resulting from the exercise of governmental functions, courts must examine three questions: (1)
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`whether the activity is a governmental function, for which the legislature has granted blanket
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`immunity; (2) if the activity is an immunized governmental function, whether that blanket
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`immunity has been waived in another section of the Act; and (3) if immunity has been waived,
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`whether the Act contains an exception to that waiver that would result in the retention of the
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`immunity despite the waiver.28
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`27 Wheeler v. McPherson, 40 P.3d 632, 635 (Utah 2002).
`28 Pigs Gun Club, Inc. v. Sanpete Cty., 42 P.3d 379, 382–83 (Utah 2002).
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`Here, Defendants’ actions fall under the blanket immunity granted under the Immunity
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`Act.29 Because Defendant’s activity is immunized, the next step is to see whether blanket
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`immunity has been waived in another section of the Act. Under Utah Code Ann. § 63G-7-
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`301(1)(b) immunity is waived for “[a]ctions arising out of contractual rights or obligations.” The
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`Court must therefore consider whether Plaintiff’s proposed state-law claims arise out of
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`contractual rights or obligations.
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`As stated, Plaintiff seeks to assert claims for breach of fiduciary duty/implied warranty of
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`good faith, quasi contract/promissory estoppel, and common law right to publicity. In Sadwick v.
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`University of Utah,30 this Court, per the Honorable Tena Campbell, found that a breach of
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`fiduciary duty is typically considered a form of tort.31 Only if Plaintiff can point to facts that
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`would suggest that her “fiduciary duty claim is the extraordinary type sounding in contract and
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`not in tort,”32 can her claim survive dismissal. Here, Plaintiff has pointed to no such facts.
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`Therefore, her breach of fiduciary duty claim does not arise out of contractual rights or
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`obligations and is barred by the Immunity Act.
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`As part of her breach of implied warranty of good faith claim, Plaintiff claims that “the
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`University of Utah entered into a contract with plaintiff to provide her educational services
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`towards a doctoral degree.”33 Plaintiff claims that the University of Utah breached this implied
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`warranty. However, Plaintiff’s state-law claims against the University of Utah are barred by the
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`29 See UTAH CODE ANN. § 63G-7-201 (West 2016).
`30 No. 2:00-CV-412 TC, 2001 WL 741285 (D. Utah Apr. 15, 2001).
`31 Id. at *12 (D. Utah Apr. 15, 2001).
`32 Id.
`33 Docket No. 37 Ex. 1 ¶ 71.
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`Eleventh Amendment. Therefore, amendment to allow this claim would be futile. Plaintiff also
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`asserts that Dr. Strassberg acted in bad faith and treated her unfairly. However, there are not
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`sufficient allegations that Plaintiff had a contractual relationship with Dr. Strassberg or that her
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`claims arise out of that relationship.
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`Plaintiff seeks to bring claims for quasi-contract and promissory estoppel based on an
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`email and letters exchanged between Plaintiff and Defendant. These items do not create any sort
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`of contractual relationship, but rather document the parties’ discussion as to whether Defendants
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`utilized Plaintiff’s methods or materials. Because these claims do not arise out of contractual
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`rights or obligations, these claims fail.34
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`Finally, Plaintiff’s claimed right to publicity sounds in tort, not contract. Therefore,
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`immunity for these claims have not been waived.
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`2.
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`Notice Under the Governmental Immunity Act of Utah
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`Defendants also argue that Plaintiff has failed to comply with the notice requirements of
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`the Immunity Act. The Act provides:
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`Any person having a claim against a governmental entity, or against its employee
`for an act or omission occurring during the performance of the employee’s duties,
`within the scope of employment, or under color of authority shall file a written
`notice of claim with the entity before maintaining an action, regardless of whether
`or not the function giving rise to the claim is characterized as governmental.35
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`The notice of a claim shall set forth: (i) a brief statement of the facts; (ii) the nature of the
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`claim asserted; (iii) the damages incurred by the claimant so far as they are known; and (iv) if the
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`claim is being pursued against a governmental employee individually as provided in Subsection
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`34 See Mecham v. Utah State Dep’t of Corrections, No. 2:09-CV-149 CW, 2011
`WL 839862, at *2 (D. Utah, Mar. 9, 2011).
`35 UTAH CODE ANN. § 63G-7-401(2).
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`63G-7-202(3)(c), the name of the employee.36 The notice of claim must provide “enough
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`specificity in the notice to inform as to the nature of the claim so that the Defendant can appraise
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`its potential liability.”37
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`In Yearsley v. Jensen, the plaintiff’s notice of claim alleged trespass and assault.38 The
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`plaintiff then moved for leave to file an amended complaint, adding on “malicious” assault and
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`battery, and “malicious” arrest and prosecution.39 The court in Yearsley did not allow the
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`plaintiffs to amend their complaint, and stated that “[n]o mention is made in [the notice of claim]
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`of any unlawful arrest or malicious prosecution . . . . [b]y no stretch of the facts can a claim for
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`the physical beating be construed to include a claim for malicious prosecution.”40
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`Plaintiff’s Notice of Claim was her draft of her first Complaint for Copyright
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`Infringement and Unfair Competition. Within the Notice, there is no mention of any of the state-
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`law claims Plaintiff seeks to add. Further, there was nothing to put Defendants on notice that
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`Plaintiff might be asserting such claims. Because the Notice of Claim did not support or
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`indicate any of Plaintiff’s new claims, Plaintiff did not comply with the Immunity Act with her
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`Notice of Claim. Compliance is jurisdictional. Therefore, this Court lacks jurisdiction over
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`Plaintiff’s state-law claims and leave to amend will not be permitted.
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`36 Id. § 63G-7-401(3)(a).
`37 Yearsley v. Jensen, 798 P.2d 1127, 1129 (Utah 1990).
`38 Id. at 1128.
`39 Id.
`40 Id. at 1129.
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`3.
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`Timeliness
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`Finally, Defendant argues that the relevant statute of limitations in the Immunity Act bars
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`Plaintiff’s state-law claims. Section 63G-7-402 of the Utah Code states:
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`A claim against a governmental entity, or against an employee for an act or
`omission occurring during the performance of the employee’s duties, within the
`scope of employment, or under color of authority, is barred unless notice of claim
`is filed with the person and according to the requirements of Section 63G-7-401
`within one year after the claim arises regardless of whether or not the function
`giving rise to the claim is characterized as governmental.41
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`The statute of limitations does not begin until the claimant knows, or through the exercise of
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`reasonable diligence, should have known of alleged claims.42
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`Plaintiff knew or should have known of many of the alleged state-law claims as early as
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`2007. For example, Plaintiff alleges that Strassberg breached his fiduciary duty when he locked
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`Plaintiff out of his laboratory in 2007.43 Plaintiff also should have known of the other alleged
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`claims sometime between 2009 and 2011, which is around the time she alleges that Defendants
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`published the allegedly infringing papers. Plaintiff’s counsel wrote a cease-and-desist letter on
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`April 1, 2011, noting Plaintiff’s awareness of the “unauthorized uses of her copyrighted masters
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`thesis work.”44 Therefore, Plaintiff should have submitted a notice of claim well before October
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`2015. In sum, Plaintiff’s state-law claims must fail because the Immunity Act grants immunity,
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`because Plaintiff failed to include the new claims in her Notice, and because amendment would
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`be untimely.
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`41UTAH CODE ANN. § 63G-7-402 (emphasis added).
`42 Id. § 63G-7-401.
`43 Docket No. 1 ¶ 17; Docket No. 37 Ex. 1 ¶ 69.
`44 Docket No. 43 Ex. 16.
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`IV. CONCLUSION
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`It is therefore
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`ORDERED that Plaintiff’s Motion for Leave to Amend (Docket No. 37) is DENIED.
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`DATED this 18th day of April, 2017.
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`BY THE COURT:
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`
`Ted Stewart
`United States District Judge
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