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Editor's Notes: Todd E. Zenger (#5238) IN THE UNITED STATES DISTRICT COURT
Plaintiff, Intellectual Reserve, Inc. ("IRI"), a Utah corporation, submits this MEMORANDUM IN SUPPORT OF ITS MOTION FOR A TEMPORARY RESTRAINING ORDER AND PRELIMINARY INJUNCTION PURSUANT TO FED. R. CIV. P. 65 requesting the Court to enjoin Utah Lighthouse Ministry, Inc., Jerald Tanner and Sandra Tanner from further copyright violations. I. STATEMENT OF ISSUES AND FACTS
IRI is the owner of a copyrighted book entitled the Church Handbook of Instructions, Book 1, Stake Presidencies and Bishoprics ("Handbook"). IRI and its affiliates have limited and controlled distribution of the Handbook. IRI has never authorized reproduction and distribution in a publically accessible electronic format. Nevertheless, Defendants Utah Lighthouse Ministry, Jerald Tanner and Sandra Tanner (collectively "Lighthouse"), recently and without authorization from IRI, intentionally and deliberately transformed substantial portions of the Handbook from hardcopy print form into an electronic version. Lighthouse has made and continues to make the electronic version available to the world without limitation or control as to further copying and distribution. Lighthouse does this by posting a copy of the electronic version at Lighthouse’s web site www.utlm.org where all may freely access, use, copy and further distribute the electronic version. Requests of IRI to cease such activity and post a warning about Lighthouse’s unlawful publication of the electronic version have been unavailing. IRI now seeks to reestablish the status quo that existed before Lighthouse’ infringing activity: IRI should control copying and distribution. Reestablishing the status quo requires a temporary restraining order (TRO) and preliminary injunction to prevent and restrain further infringements by Lighthouse and its distributees during the pendency of this action.
In about October 1998, by authority of IRI, the Handbook was printed. The Handbook is an original work of authorship. The Handbook contains a large amount of materials which are wholly original and which are copyrightable subject matter under the laws of the United States. Verified Complaint, ¶¶ 13-15. At all relevant times, IRI has been and still is the sole proprietor of all rights, title and interest in and to the copyright in the Handbook. IRI has registered the copyright in the Handbook in the United States Copyright Office. Verified Complaint, ¶¶ 16-17. All authorized copies of the Handbook contain a clear legend and notice that the Handbook is protected by copyright, as follows: © 1998 by Intellectual Reserve, Inc. All rights reserved The Handbook was prepared solely for limited and selected use by general and local Church officers to administer the affairs of IRI’s affiliates. Distribution of the Handbook is limited to specified individuals. When users who have a copy of the Handbook no longer need a copy, they are instructed to promptly return the copy. All authorized copies of the Handbook also contain an express notice of restricted access and distribution. Verified Complaint, ¶¶ 18-20. The Handbook has not been made available in a publically accessible electronic format. Verified Complaint, ¶ 21. IRI recently discovered that Lighthouse has electronically reproduced substantial portions of the Handbook. Lighthouse has widely published and distributed such reproduced portions of the Handbook by posting them on Lighthouse’s Internet website at www.utlm.org and by representing them as portions of the Handbook. By selecting, arranging, and editing the copied portions of the Handbook, Lighthouse has also prepared derivative works based upon the Handbook. Verified Complaint, ¶¶ 23-24. For example, Lighthouse has slavishly copied word-for-word, punctuation-for-punctuation, virtually all of part No. 10 of the Handbook entitled "Church Discipline," pages 91-107. The only differences are a few deletions of cross references to sections not copied and the failure to print the chart on the last page, page 108, of part No. 10. Otherwise, Lighthouse’s publication matches heading-for-heading, copying even each paragraph break. Verified Complaint, ¶ 25. Similarly, Lighthouse also copied portions of part No. 8 of the Handbook entitled "Temples and Marriages," pages 74-76, and portions of part No. 14 entitled "Records and Reports," pages 130-131. The portions of part No. 14 about removing names from Church records are copied verbatim. Again, a cross-reference was deleted, but replaced with a complete, verbatim quote from page 74 (from part No. 8). The last five paragraphs under the heading "Readmission after Name Removal" at page 131 were not included. Instead, a complete, verbatim quote from page 76 is inserted. All copying is word-for-word. Verified Complaint, ¶ 26. The reproduction, distribution, and preparation of derivative works by Lighthouse based upon the Handbook was without the permission or authorization of IRI. Verified Complaint, ¶ 27. The copies of the Handbook prepared, reproduced and distributed by Lighthouse do not contain the aforesaid notice of copyright or notice of restricted access and distribution. Verified Complaint, ¶ 28. In reproducing and distributing the Handbook, Lighthouse has acted in deliberate and willful disregard of the rights of IRI and for the specific purposes of infringing IRI’s copyrights and distributing illegal and unauthorized copies of the Handbook. Unless enjoined by this court, Lighthouse intends to continue their course of conduct and to wrongfully use and infringe upon IRI’s Handbook and works derived from it. As a direct and proximate result of the acts of Lighthouse , IRI has already suffered irreparable harm. Verified Complaint, ¶¶ 29-30. In violation of IRI’s right to control the publication of its copyrighted works, Lighthouse has publicly distributed portions of the Handbook. The posting of portions of the Handbook on the Internet greatly facilitates further infringements and makes it virtually impossible for IRI to identify recipients of unauthorized copies. IRI has no adequate electronic medium or remedy at law to redress or mitigate all of the injuries that Lighthouse has caused and intends to cause by their conduct. IRI will continue to suffer irreparable harm until Lighthouse’s actions are enjoined by this court. Verified Complaint, ¶¶ 31, 32. II. POINTS AND AUTHORITIES
The United States Copyright Act specifically provides that "[A]ny court having jurisdiction of a civil action arising under this title may . . . grant temporary . . . injunctions on such terms as it may deem reasonable to prevent or restrain infringement of a copyright." 17 U.S.C. § 502(a) (1976). Injunctive relief is designed to reestablish the status quo before the infringing activity began. It is well established in the Tenth Circuit that a movant must generally meet four requirements before being entitled to a TRO or a preliminary injunction:
Duvall v. Keating, 162 F.3d 1058, 1062 (10th Cir. 1999) (citing Lundgrin v. Claytor, 619 F.2d 61,63 (10th Cir. 1980)); Kansas Health Care Assoc. v. Kansas Dept. of Social & Rehab. Serv., 31 F.3d 1536, 1542-43 (10th Cir. 1994); Autoskill v. Nat’l Educ. Support Sys., 994 F.2d 1476, 1487 (10th Cir. 1993). See also, Longstreth v. Maynard, 961 F.2d 895, 902 (10th Cir. 1992); Jones v. Wichita State University, 698 F.2d 1082 (10th Cir. 1983). IRI’s verified complaint clearly meets each of these requirements as they are applied in copyright infringement actions. A TRO and a preliminary injunction should issue in favor of IRI in order to restore the pre-infringement control of IRI over publication of its copyrighted Handbook.
Likelihood of success on the merits in a copyright action is demonstrated upon a showing of:
Autoskill v. Nat. Educational Support Systems, 994 F.2d 1476, 1487 (10th Cir. 1993) (citing Feist Publications, Inc. v. Rural Tel. Serv. Co., 111 S.Ct. 1282, 1296 (1991)). IRI is the owner of a valid copyright registration for the Handbook The Copyright Act mandates that a certificate of a copyright "shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate." 17 U.S.C. § 410(c). The Tenth Circuit law recognizes that "[a] Certificate of Registration issued by the United States Copyright Office constitutes prima facie evidence of the validity of the copyright." Harris Market Research v. Marshall Marketing, 948 F.2d 1518, 1526 (10th Cir. 1991). The verified complaint certifies the existence of a copyright registration certificate and ownership by IRI. Verified Complaint, ¶¶ 16-17. Lighthouse has copied the copyrighted Handbook Lighthouse overtly and deliberately acknowledges its access to and possession of electronic versions of substantial portions of the Handbook. Verified Complaint, ¶ 23. This amounts to an admission by Lighthouse of copying. Equally compelling is a side-by-side comparison of substantial portions of the copyrighted Handbook and the verbatim, heading-for-heading, word-for-word, punctuation-for-punctuation, paragraph break-for-paragraph break copying by Lighthouse. Exhibit H to Verified Complaint. Lighthouse’s electronic version is not substantially similar, but a slavish, identical copy with only a few minor changes. Lighthouse’s copying is blatant. 2. Injury to IRI is Irreparable The Tenth Circuit has declared: "[W]e join the overwhelming majority of our sister circuits and recognize a presumption of injury at the preliminary injunction stage once a copyright infringement plaintiff has demonstrated a likelihood of success on the merits." Country Kids ‘N City Slicks, Inc. v. Sheen, 77 F.3d 1280, 1288-89 (10th Cir. 1996) (citing Autoskill v. Nat’l Educ. Support Sys., 994 F.2d 1476, 1498 (10th Cir. 1993)("likelihood of success on the merits usually raises a presumption of irreparable harm for preliminary injunction purposes.")); Foresight Resources Corp. v. Pfortmiller, 719 F.Supp. 1006, 1010 (D.Kan. 1989)("When a plaintiff has made out a prima facie case of infringement, irreparable harm will usually be presumed, for the purposes of injunctive relief."). In this case, IRI has established by compelling evidence likelihood of success on the merits. Therefore, irreparable harm may be presumed. Even if not presumed, the injury to IRI is irreparable. IRI and its affiliates put in place a limited and controlled distribution mechanism for the Handbook, namely, express copyright notice, and express instructions regarding distribution in hardcopy print form only, distribution to only select persons, and controlled access, duplication and return of copies when needed use was complete. Verified Complaint, ¶¶ 18-21. In other words, the Handbook has not been made available to the public, i.e., "published" as defined by copyright law. 17 U.S.C. § 101 (publication is defined as ‘distribution of copies ... of the work to the public by sale or other transfer of ownership, or by rental, lease, or lending."). Furthermore, IRI has decided not to publically distribute the Handbook in electronic form. Verified Complaint, ¶ 21. IRI and its affiliates have decided in what form to limit distribution. The exclusive rights of a copyright owner include the right to control first publication, including the decision as to "whether and in what form to release" the work. Harper & Row Publishers, Inc. v. Nation Enterprises, 471U.S. 539, 552-553 (1985). Nevertheless, Lighthouse attempts to usurp IRI’s right to control publication. Transforming IRI’s copyrighted Handbook into an electronic format and making it available for copying is not only an infringement by Lighthouse but it facilitates infringement by others. Lighthouse thereby attempts to cause and facilitate world-wide distribution of an unauthorized electronic version. Copying and distribution in electronic form fits the classic analogy of feathers being blown by the wind, once blown, it is impossible to gather them all back in. So it is with Lighthouse’s unlawful electronic conduct. The irreparable nature of the injury to IRI is further amplified because IRI is unable to identify (1) how many persons have accessed Lighthouse’s unauthorized electronic versions, (2) how many persons have made copies of Lighthouse’s unauthorized electronic versions, (3) the names and/or addresses of those persons who have accessed or made copies of Lighthouse’s unauthorized electronic versions, or (4) whether copies of copies have been made and distributed. All of which can occur electronically, effortlessly, instantaneously and without cost to the perpetrators. In short, IRI had chosen to control a selected distribution without publication to the public. Lighthouse has, however, taken it upon itself to publish the Handbook to the public. Each minute, hour and day that Lighthouse’s unauthorized publication continues contributes to more feathers being blown by the wind. This should not be permitted. The irreparable nature of the harm to IRI is further revealed by the lack of any remedial mechanisms available to IRI. IRI is unable to recall unauthorized electronic copies. Lighthouse removed IRI’s copyright notices and warnings of limited distribution in violation of 17 U.S.C. § 1202. IRI is now unable to chase down all unlawful copies to reinsert its copyright notice and warnings of limited distribution. Furthermore, IRI is unable to post an equally prominent and equally placed demand to request all copiers to destroy their unlawful copies. Hence, Lighthouse should be required to post an equally prominent and similarly placed acknowledgment of wrong doing and request that all illegal copies from its website be destroyed. Such injunctive relief appears to be the only reasonable way "to prevent or restrain infringement of a copyright" from continuing. 17 U.S.C. § 502(a) (1976). Lighthouse’s deliberate and intentional infringement is causing irreparable harm to IRI. Any refusal of Lighthouse to remove the Handbook from its website posting or post a warning clearly demonstrates Lighthouse’s intent to continue to infringe or facilitate continued infringement in the future thereby perpetuating the irreparable harm to IRI.
As demonstrated above, IRI and its affiliates have suffered and will continue to suffer injury if Lighthouse is allowed to continue the infringing conduct. Lighthouse, on the other hand, will suffer no harm as a result of being prevented from reproducing and distributing works to which it has no rights. Lighthouse will certainly not be put out of business, and the unlawful copies of the Handbook are unlikely to generate any significant part of Lighthouse’s revenues. When, as here, Lighthouse’s interference with IRI’s control of distribution and publication is merely an appropriation of protected material, this Court should find that the balance tips in IRI’s favor. See, e.g., West Publishing Co. v. Mead Data Cent., Inc., 799 F.2d 1219, 1229, 230 U.S.P.Q. 801 (8th Cir. 1986), cert. denied, 107 S. Ct. 962 (1987). Such is clearly the case here. .4. The Public Interest Will Be Best Served by Upholding IRI’s Rights Under the Copyright Act As stated by the United States District Court for the District of Kansas, "[t]he public interest is, of course best served by strictly upholding the copyright laws." Clark Equipment Co. v. Harlan Corp., 539 F. Supp. 561, 570 (D. Kan. 1982). Lighthouse’s infringing conduct is contrary to public interest. This Court should issue injunctions to safeguard the public interest. III. SECURITY IRI is aware of no potential monetary damage to Lighthouse if injunctions are granted. Therefore, IRI requests that the Rule 65(c) security requirement be waived. In the alternative, any security requirement should be nominal and satisfied by an undertaking of IRI. IV. CONCLUSION IRI is the owner of the copyrighted Handbook. Lighthouse’s deliberate, blatant copying and distribution of substantial portions of the Handbook infringe’s IRI’s exclusive rights in the Handbook and has caused and continues to cause irreparable injury to IRI. As established above, IRI has clearly met each of the requirements for the issuance of a TRO and preliminary injunction in this case. Accordingly, IRI’s Motion for a Temporary Restraining Order and a Preliminary Injunction should be granted. DATED this 13th day of October, 1999. KIRTON & McCONKIE
By: __________________ Todd E. Zenger, Esq. |
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