Case 1:07-cv-00154-ECH Document 50 Filed 08/09/10 Page 1 of 15
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`In the United States Court of Federal Claims
`
`No. 07-154 C
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`(E-Filed: August 9, 2010)
`
`Summary Judgment; Copyright
`Registration; Conveyance of
`Exclusive Rights; Standing to
`Bring Suit for Copyright
`Infringement; Beneficial
`Ownership; Continuing Wrong
`Doctrine Unavailable; Tolling
`Provision; 28 U.S.C. § 1498(b);
`Continuing Presence of
`Infringing Materials Cached on
`the Internet
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`NORMAN H. COHEN, Ed.D.,
`
`Plaintiff,
`
` v.
`
`THE UNITED STATES,
`
` Defendant.
`
`Jonathan M. Cohen, Philadelphia, PA, for plaintiff.
`
`Susan L.C. Mitchell, with whom were Tony West, Assistant Attorney General, and John
`J. Fargo, Director, Intellectual Property Section, Commercial Litigation Branch, Civil
`Division, United States Department of Justice, Washington, DC, for defendant. David M.
`Ruddy, United States Department of Justice, Washington DC, of counsel.
`
`OPINION AND ORDER
`
`HEWITT, Chief Judge
`
`Dr. Norman H. Cohen (plaintiff or Dr. Cohen) brought an action for copyright
`infringement against the United States government, acting through the Federal
`Emergency Management Agency (United States, FEMA, government or defendant).
`Civil Action Complaint (Complaint or Compl.), Docket Number (Dkt. No.) 1, ¶¶ 5, 6, 10.
`Plaintiff contends that the United States infringed his copyright in at least twelve works
`when it displayed the works on FEMA’s website, making the works available to the
`
`

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`Case 1:07-cv-00154-ECH Document 50 Filed 08/09/10 Page 2 of 15
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`public. Id. ¶¶ 5, 10-12. The government moves for partial summary judgment,
`contending that plaintiff failed to register one of the works and that plaintiff’s
`1
`conveyance of certain exclusive rights deprived him of standing to bring suit.
`
`I.
`
`Background
`
`Now before the court are United States’ Motion for Partial Summary Judgment
`(defendant’s Motion or Def.’s Mot.), Docket Number (Dkt. No.) 37, filed February 25,
`2010; Plaintiff’s Response [in] Opposition to United States’ Motion for Partial Summary
`Judgment (plaintiff’s Response or Pl.’s Resp.), Dkt. No. 42, filed April 5, 2010; and
`United States’ Reply to Plaintiff’s Opposition to its Motion for Partial Summary
`Judgment and Supplemental Appendix (defendant’s Reply or Def.’s Reply), Dkt. No. 47,
`filed May 6, 2010. Defendant attached an Appendix (defendant’s Appendix or Def.’s
`App.) in support of its Motion. Plaintiff attached an Appendix (plaintiff’s Appendix or
`Pl.’s App.) in support of its Response.
`
`The government moves for partial summary judgment on three grounds. Def.’s
`Mot. 1. First, the government contends that Dr. Cohen did not obtain a certificate of
`registration from the Copyright Office for the article, “The Principles of Adult Mentoring
`Scale” (The Principles Article). Def.’s Mot. 1, 3-4. Second, the government contends
`2
`that Dr. Cohen does not have standing to sue for copyright infringement because he
`assigned exclusive rights to Human Resource Development Press, Inc. (HRD Press) and
`was therefore no longer the copyright owner in four of the works: The Principles Article;
`The Principles Article, Leader’s Guide; The Manager’s Pocket Guide to Effective
`Mentoring; and The Mentee’s Guide to Mentoring (collectively, the HRD Press Works).
`Id. at 1, 5-6, 8. Third, the government contends that plaintiff’s right to recovery should
`be limited to “damages incurred from direct infringement by the government committed
`
` Section 411(a) requires that a plaintiff register a work before bringing a claim for
`1
`copyright infringement. 17 U.S.C. § 411(a) (2006). A certificate of registration documents
`satisfaction of this requirement. Id. at (b)(1).
`
` The word “Scale” in the title was later replaced by the word “Inventory,” thereby
`2
`changing the title to “Principles of Adult Mentoring Inventory,” which was shortened to and
`frequently referred to as “PAMI.” Plaintiff’s Response [in] Opposition to United States’ Motion
`for Partial Summary Judgment (plaintiff’s Response or Pl.’s Resp.) Docket Number (Dkt. No.)
`42, 11 n.7. Plaintiff refers to the work as “Principles of Adult Mentoring Inventory,” and
`defendant refers to the same work as “The Principles of Adult Mentoring Scale.” Compare id. at
`10-11, with United States’ Motion for Partial Summary Judgement (defendant’s Motion or Def.’s
`Mot.), Dkt. No. 37, 3-5. The court refers to the work as The Principles Article throughout its
`Opinion and Order.
`
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`Case 1:07-cv-00154-ECH Document 50 Filed 08/09/10 Page 3 of 15
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`between March 9, 2004 and March 15, 2005.” Id. at 1, 10-12. The court has jurisdiction
`over this action pursuant to 28 U.S.C. § 1498(b), which provides that a claim of copyright
`infringement against the United States shall be brought before the United States Court of
`Federal Claims (CFC). 28 U.S.C. § 1498(b) (2006). The statute of limitations governing
`this action is three years. Id. The action is timely because the acts complained of
`occurred within three years of March 9, 2007, the date the Complaint was filed. See
`Compl.
`
`A.
`
`Copyright Registration in The Principles Article
`
`The United States asserts that Dr. Cohen failed to obtain a certificate of
`registration from the Copyright Office for The Principles Article and therefore cannot
`bring a suit of copyright infringement with regard to this work. Def.’s Mot. 3-5. The
`article is included in a compilation titled “New Directions for Adult and Continuing
`Education” and is published by Jossey-Bass Inc., Publishers (Jossey-Bass). Id. at 3-4.
`Jossey-Bass holds the copyright in the compilation as a collective work. Id. at 4. The
`parties agree that Jossey-Bass has a valid copyright in the compilation, but the parties
`disagree as to whether plaintiff has a registered copyright in The Principles Article. Id.;
`Pl.’s Resp. 5. Defendant asserts that plaintiff failed to register The Principles Article and
`is therefore barred from bringing suit. Def.’s Mot. 4 (citing Def.’s App. A7-A9
`(Compilation Registration Certificate), A58-A59 (Deposition of Dr. Cohen)).
`
`Plaintiff’s position appears to be that a separate registration for The Principles
`Article is unnecessary because it is part of his doctoral dissertation for which he obtained
`a certificate of registration from the Copyright Office. See Pl.’s Resp. 4, 11-12. Plaintiff
`maintains that the Principles Article is included within his dissertation, and that because
`his dissertation is protected by copyright, the Principles Article is also protected. Id. at 4-
`5. In support of his position, plaintiff submitted a certificate of registration from the
`Copyright Office for his doctoral dissertation, “Development and Validation of the
`Principles of Adult Mentoring Scale for Faculty Mentors in Higher Education.” Pl.’s
`App. A77-A78 (Dissertation Registration Certificate); see also Pl.’s App. A775
`(Deposition of Dr. Cohen). The dissertation was submitted to the Copyright Office for
`registration, and the Copyright Office issued a certificate of registration for plaintiff’s
`dissertation with an effective date of October 22, 1993. Pl.’s App. A77-A78 (Dissertation
`Registration Certificate). During his March 18, 2009 deposition, plaintiff submitted the
`certificate of registration for his doctoral dissertation as Cohen-Exhibit-15. Pl.’s App.
`A609, A775 (Deposition of Dr. Cohen). Neither party has submitted a copy of plaintiff’s
`dissertation or a copy of the article in question. See Def.’s App. passim; Pl.’s Resp. ii
`(listing the table of contents for plaintiff’s appendix); Pl.’s App. passim.
`
`3
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`B.
`
`Copyright Ownership in the HRD Press Works
`
`The government asserts that plaintiff lacks standing to sue for infringement
`because he is not the copyright owner of the HRD Press Works. Def.’s Mot. 1, 5-6. In
`particular, the government contends that, because Dr. Cohen assigned exclusive rights to
`publish and market the works to HRD Press, Dr. Cohen no longer has standing to bring a
`claim of copyright infringement. Id. at 7-9. Plaintiff signed publishing contracts with
`HRD Press for each of the HRD Press Works. Pl.’s App. A101-A113 (HRD Press
`Contracts); see also Def.’s App. A13-A18 (HRD Press Contracts). The relevant terms of
`the contract for each of the four HRD Press Works are identical: plaintiff conveys “the
`exclusive right to publish and market the Work” to HRD Press, e.g., Pl.’s App. A101, ¶1,
`A105 ¶1 (HRD Press Contracts), in exchange for royalty payments, e.g., Pl.’s App. A102,
`¶7, A106 ¶7 (HRD Press Contracts). The government asserts that, because the exclusive
`rights to reproduce, distribute and display the works were conveyed to HRD Press, only
`HRD Press has standing to sue for infringement of these rights. Def.’s Mot. 9-10.
`
`Plaintiff asserts that defendant has conflated legal ownership of a copyright with
`beneficial ownership of a copyright. Pl.’s Resp. 14 n.10. Plaintiff asserts that he is the
`beneficial owner of the copyright because he receives royalty payments from HRD Press.
`Id. at 1, 5; see, e.g., Pl.’s App. A102, ¶7, A106 ¶7 (HRD Press Contracts) (stating that
`plaintiff will receive royalty payments from HRD Press for the HRD Press Works).
`Plaintiff contends that he has standing to sue for infringement as a beneficial owner. Pl.’s
`Resp. 14, 17.
`
`C.
`
`Availability of Damages
`
`Plaintiff filed suit against the government on March 9, 2007. Def.’s Mot. 10;
`Compl. The government contends that, because 28 U.S.C. § 1498 places a three-year
`limitation on recovery, plaintiff is unable to recover damages for any infringement that
`occurred prior to March 9, 2004. Def.’s Mot. 10-11. Further, the government asserts that
`“all of the accused materials were removed from FEMA’s website” as of March 15, 2004.
`Id. at 11. The government contends that plaintiff’s recovery is therefore limited to the
`seven-day period, March 9 to March 15, 2004. Id. The government further contends that
`the tolling provision of 28 U.S.C. § 1498 is inapplicable because Dr. Cohen never made
`“a written claim for compensation” that satisfies the requirements of the statute. Id. at 12-
`13; see 28 U.S.C. § 1498(b) (tolling the statute of limitations if “a written claim for
`compensation” is made to the agency or department responsible for the claim).
`
`Plaintiff asserts that, although FEMA took down the materials from its website on
`March 15, 2004, this was insufficient to remove the materials from the internet, because
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`Case 1:07-cv-00154-ECH Document 50 Filed 08/09/10 Page 5 of 15
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`they were still readily accessible via cached websites. Pl.’s Resp. 17-18. Further,
`plaintiff asserts that the infringing works on the internet were deliberately posted and
`maintained every second of every day--which is different from the “ephemeral act of
`infringement in the unauthorized broadcast of a 3-minute song, a 2[-]hour movie, or
`unauthorized sale of a book.” Id. at 18.
`
`Plaintiff contends that the written notice he sent to FEMA on October 17, 2005,
`see Def.’s App. A2 (Oct. 17 FEMA Letter), constitutes “a written claim for
`compensation” such that any limitations period should be tolled. Pl.’s Resp. 20 n.16; see
`28 U.S.C. § 1498(b). On October 17, 2005 plaintiff wrote a letter to FEMA, the text of
`which states, in full:
`
`It has been many weeks since you said you would speak to Ms. Zaidel and
`get back to me about this matter. I never heard from you. Please let me
`know if I have to sue FEMA to get a response.
`
`Def.’s App. A2 (Oct. 17 FEMA Letter). Jordan Fried (Mr. Fried), Associate General
`Counsel for Litigation, responded to plaintiff on October 25, 2005, in a letter which
`states, in relevant part:
`
`Thank you for your recent letter threatening to bring suit against the Federal
`Emergency Management Agency. As you recall, when you called me I had
`no background on the matters of concern to you. As we further discussed,
`you had been working with Edward Broyles of this office to address your
`concerns. I advised Mr. Broyles of your call and the particular issues raised
`by you, and referred the matter back to him.
`
`Def.’s App. A3 (Oct. 25 FEMA Letter). Plaintiff replied to Mr. Fried on November 1,
`2005, stating, in relevant part:
`
`[I]n my letter, I asked you if I need to sue FEMA to get a response to my
`inquiry, as I cannot seem to get one any other way. Your interpretation of
`that question as a threat seems to say that FEMA has no intention of
`amicably responding to my inquiry regarding a clear cut case of copyright
`infringement. If I am wrong about this, please advise me immediately.
`
`Def.’s App. A4 (Nov. 1 FEMA Letter). FEMA’s response, dated January 26, 2006, from
`Edward Broyles (Mr. Broyles), Acting Associate General for General Law, FEMA Office
`of General Counsel, states in relevant part:
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`Case 1:07-cv-00154-ECH Document 50 Filed 08/09/10 Page 6 of 15
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`[T]he use by FEMA [of the HRD Press Works] appears to be within the
`Fair Use Doctrine.
`
`Notwithstanding the above, I recognize that the course materials should
`have been removed from the website at the conclusion of the course, and
`apologize for the omission. The materials have been removed.
`
`Def.’s App. A5-A6 (Jan. 26 FEMA Letter). Plaintiff contends that this communication is
`sufficient to toll the statute of limitations from October 17, 2005 until January 26, 2006.
`Pl.’s Resp. 20 n.16.
`
`II.
`
`Legal Standards
`
`A.
`
`Summary Judgment
`
`Under Rule 56 of the Rules of the Court of Federal Claims (RCFC), summary
`judgment is appropriate where “the pleadings, the discovery and disclosure materials on
`file, and any affidavits show that there is no genuine issue as to any material fact and that
`the movant is entitled to judgment as a matter of law.” RCFC 56(c)(1); see Anderson v.
`3
`Liberty Lobby, Inc. (Anderson), 477 U.S. 242, 247-48 (1986) (reviewing Rule 56(c) of
`the Federal Rules of Civil Procedure (FRCP)); Cross Med. Prods., Inc. v. Medtronic
`Sofamor Danek, Inc., 424 F.3d 1293, 1302 (Fed. Cir. 2005) (same). A fact is material if
`it might significantly affect the outcome of the litigation. Anderson, 477 U.S. at 248. A
`dispute about a material fact is genuine “if the evidence is such that a reasonable jury
`could return a verdict for the nonmoving party.” Id; see Matsushita Elec. Indus. Co., v.
`Zenith Radio Corp. (Matsushita), 475 U.S. 574, 587 (1986) (stating that there is no
`genuine dispute “[w]here the record taken as a whole could not lead a rational trier of fact
`to find for the non-moving party”).
`
` The RCFC generally mirror the Federal Rules of Civil Procedure (FRCP). RCFC 56
`3
`rules comm. notes (2002) (“The subdivision structure of RCFC 56 was reordered to more closely
`conform to FRCP 56.”); see Flowers v. United States, 75 Fed. Cl. 615, 624 (2007) (“RCFC 56 is
`patterned on Rule 56 of the [FRCP] and is similar in language and effect.”); see also C. Sanchez
`& Son, Inc. v. United States, 6 F.3d 1539, 1541 n.2 (Fed. Cir. 1993) (“The [RCFC] generally
`follow the [FRCP]. [RCFC] 56(c) is, in pertinent part, identical to [FRCP] 56(c).”). Therefore,
`the court relies on cases interpreting FRCP 56 as well as those interpreting RCFC 56.
`Champagne v. United States, 35 Fed. Cl. 198, 205 n.5 (1996) (“In general, the rules of this court
`are closely patterned on the [FRCP]. Therefore, precedent under the [FRCP] is relevant to
`interpreting the rules of this court, including Rule 56.”).
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`In considering such a motion, the court will, absent persuasive reason to the
`contrary, deem the material facts claimed and adequately supported by the
`moving party to be established, except to the extent that such material facts
`are controverted . . . .
`
`RCFC 56(c)(1). Further, under RCFC 56, the court must draw all inferences from the
`facts before it in the light most favorable to the nonmoving party. Matsushita, 475 U.S. at
`587; Mann v. United States, 334 F.3d 1048, 1050 (Fed. Cir. 2003) (citing Anderson, 477
`U.S. at 255).
`
`B.
`
`1.
`
`Copyright Infringement
`
`Copyright Registration
`
`The Copyright Act requires an author to register the work prior to bringing an
`action for infringement. 17 U.S.C. § 411(a) (2006) (“no action for infringement of the
`copyright in any United States work shall be instituted until preregistration or registration
`of the copyright claims has been made in accordance with this title”). An author is
`required to have a certificate of registration from the Copyright Office before filing a suit
`for copyright infringement. Id. The owner of the copyright has the burden of production
`with regards to the certificate of registration, which is presumptively valid and is prima
`facie evidence of a valid copyright. Id. § 411(b)(1); Herbert v. United States, 36 Fed. Cl.
`299, 303 (1996); see 17 U.S.C. § 410(c).
`
`The Copyright Act protects both original works and compilations of original
`works. 17 U.S.C. § 103(a).
`
`The copyright in a compilation or derivative work extends only to the
`material contributed by the author of such [derivative] work, as
`distinguished from the preexisting material employed in the work, and does
`not imply any exclusive right in the preexisting material. The copyright in
`such work is independent of, and does not affect or enlarge the scope,
`duration, ownership, or substance of, any copyright protection in the
`preexisting material.
`
`Id. § 103(b). The copyright in a compilation is therefore separate and distinct from the
`copyright in the originals works comprising the compilation. See id. A certificate of
`registration in the compilation does not affect the existence of, or lack of, a certificate of
`registration in any of the underlying original works. See id. The compilation and the
`underlying works are separate, and the author of either work must have a certificate of
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`Case 1:07-cv-00154-ECH Document 50 Filed 08/09/10 Page 8 of 15
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`registration in the work before bringing suit for infringement of that work. See id.
`§§ 103(b), 411(a). A certificate of registration in the compilation allows the owner of the
`compilation to bring an infringement suit based on the compilation work, but it would not
`be sufficient in and of itself to bring an infringement suit based on any of works the
`compilation comprises. See id. § 103(b).
`
`2.
`
`Copyright Ownership
`
`The owner of a copyright has the exclusive right to reproduce the work, prepare
`derivative works, distribute copies to the public and to perform and display the work.
`Id. § 106. Ownership of a copyright, or of any of the exclusive rights, may be transferred
`in whole or in part. Id. § 201(d). If the owner of a copyright transfers any of the
`exclusive rights granted by § 106, the protections and remedies afforded the owner are
`also transferred. Id. § 201(d)(2) (“The owner of any particular exclusive right is entitled,
`to the extent of that right, to all the protection and remedies accorded to the copyright
`owner by [the Copyright Act].”).
`
`“Section 501 gives the legal or beneficial owners of any of the [17 U.S.C. §]106
`exclusive rights the power to sue for infringement.” Campbell v. Bd. of Trs. of Leland
`Stanford Junior Univ., 817 F.2d 499, 504 (9th Cir. 1987); see 17 U.S.C. § 501(b) (“The
`legal or beneficial owner of an exclusive right under a copyright is entitled, subject to the
`requirements of [17 U.S.C. §]411, to institute an action for any infringement of that
`particular right committed while he or she is the owner of it.”). Both the beneficial owner
`and the legal owner of the copyright have standing to sue for infringement. 17 U.S.C.
`§ 501(b); Bandai Am. Inc. v. Bally Midway Mfg. Co., 775 F.2d 70, 73-74 (3d. Cir. 1985).
`
`A beneficial owner is someone with an economic interest in the copyright. Cortner
`v. Israel (Cortner), 732 F.2d 267, 270-71 (2d Cir. 1984). A beneficial owner may bring
`an infringement action to protect this economic interest. See id. (finding that authors of a
`work had standing to sue for infringement as beneficial owners after conveying “sole and
`exclusive” rights to defendant in exchange for royalties). An author who has conveyed
`exclusive rights in a work in exchange for royalty payments is the beneficial owner of the
`work. Cortner, 732 F.2d at 270-71; see Moran v. London Records, Ltd., 827 F.2d 180,
`183 (7th Cir. 1987) (discussing the legislative history behind 17 U.S.C. § 501(b)). In the
`context of copyright, the cases define a beneficial owner as the party who receives royalty
`payments for the work. See, e.g., Moran, 827 F.2d at 183 (“[I]t is significant that the
`example Congress [gave of a beneficial owner] was that of an author who assigned his
`work in exchange for royalties . . . .”); Cortner, 732 F.2d 270-71; Fantasy, Inc. v. Fogerty
`(Fantasy), 654 F. Supp. 1129, 1131 (N.D. Cal. 1987) (defining a beneficial owner as an
`author who has parted with legal title in exchange for royalty payments). An author who
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`Case 1:07-cv-00154-ECH Document 50 Filed 08/09/10 Page 9 of 15
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`receives royalty payments for the work therefore has standing to bring an infringement
`suit as a beneficial owner. See 17 U.S.C. § 501(b); Cortner, 732 F.2d 270-71; Fantasy,
`654 F. Supp. at 1131.
`
`C.
`
`Limits of Recovery
`
`An action by a copyright owner for infringement against the United States may be
`brought exclusively at the CFC and must be brought within three years of the
`infringement. 28 U.S.C. § 1498(b).
`
`Except as otherwise provided by law, no recovery shall be had for any
`infringement of a copyright covered by this subsection committed more
`than three years prior to the filing of the complaint or counterclaim for
`infringement in the action, except that the period between the date of receipt
`of a written claim for compensation by the Department or agency of the
`Government or corporation owned or controlled by the United States, as the
`case may be, having authority to settle such claim and the date of mailing by
`the Government of notice to the claimant that his claim has been denied
`shall not be counted as part of the three years, unless suit is brought before
`the last-mentioned date.
`
`Id. A copyright owner can recover damages for infringement only for those acts that
`occurred within three years of the filing of the claim unless the copyright owner is entitled
`to the benefit of the tolling provision in the statute. Id. The statute tolls the recovery
`period if the copyright owner files “a written claim for compensation” with the
`department or agency that is responsible for settling the claim. Id.
`
`The court has found no case interpreting 28 U.S.C. § 1498. However, the tolling
`provision in 35 U.S.C. § 286, which is applicable to patents, contains language that is
`substantively identical to the tolling provision in 28 U.S.C. § 1498(b). Compare 35
`U.S.C. § 286 (2006) (tolling the statute of limitation if the plaintiff submits “a written
`claim for compensation [to] the department or agency of the Government having authority
`to settle such claim”), with 28 U.S.C. § 1498(b) (tolling the statute of limitations if the
`plaintiff submits “a written claim for compensation [to] the Department or agency of the
`Government . . . having authority to settle such claim”). Section 286 has been interpreted
`to require notice that is “sufficiently detailed to afford the Government a realistic
`opportunity to consider and settle the claim.” Custer v. United States, 224 Ct. Cl. 140,
`622 F.2d 554, 557-58 (1980); see also Motorola, Inc. v. United States, 13 Cl. Ct. 420, 428
`(1987) (requiring that written claim “must be calculated to make a Government officer
`reasonably aware that a claim is being made”).
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`The applicable statute of limitations is also affected by the continuing wrong
`doctrine, a doctrine that has been accepted by some circuits but rejected by others. See
`4
`MAI Basic Four, Inc. v. Basis, Inc., 962 F.2d 978, 987 n.9 (10th Cir. 1992) (noting that
`the United States Court of Appeals for the Seventh Circuit (Seventh Circuit) applies the
`continuing wrong doctrine to copyright infringement, but that the United States Court of
`Appeals for the Second Circuit (Second Circuit) and the United States Court of Appeals
`for the Sixth Circuit (Sixth Circuit) do not); Wechsberg v. United States, 54 Fed. Cl. 158,
`161 (2002). If copyright infringement is a continuing wrong, the statute of limitations
`begins to run from the date of the last infringing act, and a complaint filed within the
`limitations period will encompass the entire period of infringement--regardless of when
`the infringement started. See Taylor v. Meirick, 712 F.2d 1112, 1118-19 (7th Cir. 1983).
`In Taylor, the Seventh Circuit applied the continuing wrong doctrine to copyright
`infringement and determined that as long as the suit was brought within the statute of
`limitations period from the last infringing act, plaintiff could recover damages for the
`“entire duration of the alleged violation.” Taylor, 712 F.2d at 1118-19. If copyright
`infringement is not a continuing wrong, separate statutes of limitations periods run from
`each wrongful act, and recovery is limited to those acts as to which the limitations period
`has not run. See Taylor, 712 F.2d at 1118-19; cf. Bridgeport Music, Inc. v. Diamond
`Time, Ltd. (Bridgeport), 371 F.3d 883, 890-91 (6th Cir. 2004). In Bridgeport, the Sixth
`Circuit rejected the application of the continuing wrong doctrine to copyright
`infringement and held that any act of infringement that was outside the limitations period
`was time barred. Bridgeport, 371 F.3d at 890-91 (citing Makedwde Pub. Co. v. Johnson,
`37 F.3d 180, 182 (5th Cir. 1994)).
`
`The CFC rejected the application of the continuing wrong doctrine to copyright
`infringement under § 1498(b). See Wechsberg, 54 Fed. Cl. at 161. The Wechsberg court
`based its holding “on the plain language of Section 1498(b), the strict construction of
`waivers of sovereign immunity that governs this Court, and the weight of precedent under
`general copyright law” and limited recovery to the specific acts of infringement that
`occurred within the three-year limitations period. Id. (internal citations omitted). The
`court finds the reasoning of the Weschberg court persuasive, and declines to apply the
`continuing wrong theory to plaintiff’s claim.
`
`III.
`
`Discussion
`
`A.
`
`Copyright Registration in The Principles Article
`
` The United States Court of Appeals for the Federal Circuit has not ruled on the
`4
`continuing wrong doctrine with respect to copyright infringement.
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`As its first ground for summary judgment, the government asserts that Dr. Cohen
`never registered The Principles Article and that, because registration is a prerequisite to
`instituting a claim of infringement, plaintiff’s suit is barred. Def.’s Mot. 3-5. Plaintiff
`relies on the contention that The Principles Article is part of his dissertation and is
`therefore protected by the registration certificate he received from the Copyright Office in
`1993 for his doctoral dissertation. Pl.’s Resp. 11 n.7. In support of his position, plaintiff
`submitted the certificate of registration, effective October 22, 1993, for his doctoral
`dissertation, “Development and Validation of the Principles of Adult Mentoring Scale for
`Faculty Mentors in Higher Education.” Pl.’s App. A77-A78 (Dissertation Registration
`5
`Certificate). Plaintiff’s certificate of registration serves as prima facie proof of a valid
`copyright in his dissertation. 17 U.S.C. § 410(c). Plaintiff asserts that The Principles
`Article is included in his doctoral dissertation for which copyright registration was
`complete in 1993 and that copyright registration is therefore complete. Pl.’s Resp. 11.
`
`In considering a motion for summary judgment, the court must consider facts in
`the light most favorable to the non-moving party, here, Dr. Cohen. See Matsushita, 475
`U.S. at 587. Defendant has not provided any material facts contained in “pleadings, the
`discovery and disclosure materials on file, [or] any affidavits,” RCFC 56(c), to dispute
`plaintiff’s contention that The Principles Article is included as part of plaintiff’s doctoral
`dissertation and is therefore protected by plaintiff’s 1993 copyright registration. Viewing
`the evidence in the light most favorable to plaintiff, the court finds that the government is
`unable to demonstrate that it is entitled to judgment as a matter of law. For the foregoing
`reasons, the government’s Motion regarding copyright registration of The Principles
`Article is DENIED.
`
`B.
`
`Copyright Ownership in the Four Works Published by HRD Press
`
`As its second ground for summary judgment, the government asserts that, because
`plaintiff conveyed exclusive rights to market and distribute the HRD Press Works to HRD
`Press, plaintiff does not have standing to sue for copyright infringement. Def.’s Mot. 5-
`10. Plaintiff asserts that he has standing to sue as a beneficial owner. Pl.’s Resp. 13-17.
`Section 501 provides that both the legal owner and the beneficial owner have standing to
`sue for copyright infringement. 17 U.S.C. § 501(b) (“The legal or beneficial owner . . . is
`entitled . . . to institute an action for any infringement . . . .”). Beneficial owners include
`authors who have conveyed exclusive rights in their work in exchange for royalty
`payments. See Cortner, 732 F.2d 270-71. In Cortner, the Second Circuit determined that
`
` Plaintiff also produced a “Letter of Agreement” that he signed with Jossey-Bass in
`5
`which he retained all legal rights to the materials to be published. Pl.’s Resp. 11 (citing Pl.’s
`App. A793-A795 (Jossey-Bass Contract)).
`
`11
`
`

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`Case 1:07-cv-00154-ECH Document 50 Filed 08/09/10 Page 12 of 15
`
`the plaintiffs’ “right to royalties, although contingent on [the defendant’s] exploitation of
`the [work], gave [the plaintiffs] a sufficient beneficial interest in the copyright to give
`[them] standing to seek judicial relief under the copyright law against infringement.” Id.
`at 270-71.
`
`The publishing contracts signed by Dr. Cohen and a representative of HRD Press
`conveys to HRD Press the exclusive rights “to publish and market the [HRD Press
`Works] . . . at its sole discretion,” Pl.’s App. A101, A 105, A108, A111 (HRD Press
`Contracts), in exchange for royalty payments, Pl.’s App. A102, A106, A109, A112 (HRD
`Press Contracts). Specifically, Dr. Cohen received 15% of HRD Press’s net receipts and
`17.5% of net receipts over $200,000, plus 50% of gross receipts for licensed uses and
`translation rights. Id. at A102, A106, A109, A112. Dr. Cohen therefore retained
`beneficial ownership of the HRD Press Works when he transferred exclusive rights to
`HRD Press in exchange for a percentage of royalties based on sales and license fees. See
`id. at A101-A114 (HRD Press Contracts).
`
`In order to prevail on its motion for summary judgment the government must
`demonstrate that plaintiff has no beneficial or legal interest in the works in question. See
`17 U.S.C. § 501(b). Here, the government has put forward no evidence to dispute that Dr.
`Cohen is a beneficial owner of the HRD Press Works. See Def.’s App. passim. Because
`6
`defendant has failed to provide material facts contained in “pleadings, the discovery and
`disclosure materials on file, [or] any affidavits,” RCFC 56(c), the government is unable to
`demonstrate that it is entitled to judgment as a matter of law. For the foregoing reasons,
`the government’s Motion regarding plaintiff’s standing to sue for copyright infringement
`with regard to the HRD Press Works is DENIED.
`
` Defendant also argues that “Dr. Cohen had to seek permission from HRD Press to
`6
`publish a derivative work, which by definition would be based on the same subject matter as the
`original work.” Def.’s Mot. 9-10. The right to make a derivative work and standing to sue for
`infringement of an original work are separate, divisible rights. See 17 U.S.C. § 103(b). Section
`501 affords both the beneficial and the legal owner standing to sue. Id. § 501(b). The right to
`make a derivative work is held by the legal owner of that right. See id. § 103(b). Accordingly,
`an author who is the beneficial owner of a work has standing to sue for infringement, see id.
`§ 501(b), even if the author does not have the right to make a derivative work. Defendant’s
`argument--that Dr. Cohen does not have standing to sue for infringement because he would not
`have the right to publish a derivative work--confuses and conflates two separate and distinct
`rights of an author. Defendant’s