Defendants' Memorandum in Support of Motion to Dismiss.
Re: Intellectual Reserve v. Utah Lighthouse Ministries (copyright case).
U.S. District Court, Utah, Case No. 2:99 CV 808C.
Date filed: November 12, 1999.
Source: Utah Legal Clinic.

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BRIAN M. BARNARD USB #0215
JAMES L. HARRIS, Jr. USB #8204
UTAH LEGAL CLINIC
Attorneys for DEFENDANTS
Utah Lighthouse Ministry, Inc.,
Jerald Tanner & Sandra Tanner
214 East Fifth South Street
Salt Lake City, Utah 84111-3204
Telephone: (801) 328-9531

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH
CENTRAL DIVISION

BRIAN M. BARNARD and JAMES L. HARRIS, Jr. on behalf of defendants Utah Lighthouse Ministry, Inc., Jerald Tanner and Sandra Tanner, pursuant to Fed. R. Civ. P. 12(b)(6) and 12(b)(1) moved this Court to dismiss the complaint herein, now in support of that motion they submit the following memorandum:

PRELIMINARY STATEMENT

2. Plaintiff’s complaint fails to state sufficient facts to establish jurisdiction of this Court over the subject matter of this action. Plaintiff’s complaint should be dismissed pursuant to Fed. R. Civ. P. 12(b)(1).

PERTINENT ALLEGATIONS

4. The complaint sets forth that plaintiff is the owner of the copyright in a work entitled Church Handbook of Instructions. Complaint ¶ 16.

5. Plaintiff alleges that it has registered a copyright in the work entitled Church Handbook of Instructions. Complaint ¶ 17. In its application to register the copyright in the work entitled Church Handbook of Instructions, plaintiff designated the work as a derivative work or compilation and claimed copyright in the "selection, arrangement, condensation, and revision of preexisting text." Exhibit "A" to complaint, p. 2, § 6. The preexisting text was "prior handbooks, supplements and instructions." Id.

6. Plaintiff does not allege that defendants infringed either the selection or arrangement of compiled materials in which it claims copyright. Instead, it alleges that defendants infringed approximately seventeen (~17) pages of text by verbatim copying.

7. Plaintiff has not alleged ownership interest (by authorship or assignment) in the contents of the material at issue, i.e., seventeen (~17) pages formerly on defendants’ website. Plaintiff has not alleged a copyright registration of the contents of the material at issue, i.e., seventeen (~17) pages. Plaintiff has not alleged ownership of the copyright of the contents of the material at issue, i.e., seventeen (~17) pages.

8. That defendants may have published one chapter and a few pages from two (2) other chapters of a derivative or compilation work, does not constitute a violation of the copyright protection granted to the derived or compiled work. The complaint fails to allege infringement of the elements (selection, arrangement, etc.) of the derivative or compilation work in which plaintiff claims a copyright.

9. With regard to the contents of the seventeen (~17) pages that defendants have allegedly infringed, i.e., the "preexisting text," plaintiff has failed to allege registration of copyright. Moreover, the copyright registration indicates that no registration had been made in the Copyright Office for an earlier version of the work. Exhibit "A" to complaint, p. 2, §5. Registration of copyright in the work that is allegedly infringed is a jurisdictional requirement. 17 U.S.C. § 411. This Court lacks jurisdiction.

10. With regard to the contents of the seventeen (~17) pages at issue, plaintiff has failed to allege facts necessary to show ownership of a valid copyright:

1. when the pages were first published,

2. whether they were published in compliance with the applicable copyright law,

3. who was their author or creator,

4. whether they were published with any required copyright notices, and

5. whether any renewal copyright was properly registered if necessary.

17 U.S.C. § 409.

ARGUMENT

Failure to Allege Infringement of Derivative Work or Compilation

A copyright on a compilation or derivative work does not grant copyright protection in the contents of the compiled materials. A copyright in a compilation or derivative work grants copyright protection only as to the selection and arrangement of the compiled materials.

Plaintiff designated the copyrighted work as a derivative work or compilation and claimed copyright specifically in the "selection, arrangement, condensation, and revision of preexisting text." Exhibit "A" to complaint, p. 2, § 6.

The 1976 Copyright Act provides:

The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the pre-existing material employed in the work, and does not imply any exclusive right in the pre-existing material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence or, any copyright protection in the pre-existing material.

17 U.S.C. § 103(b).

Copyright in a derivative or collective work covers only those elements contained therein that are original with the copyright claimant. Durham Indus. Inc. v. Tomy Corp., 630 F.2d 905 (2nd Cir. 1980); Eden Toys, Inc. v. Florelee Undergarment Co., 526 F.Supp. 1187 (S.D.N.Y. 1981) rev’d on other grounds, 697 F.2d 27 (2nd Cir. 1983); Musto v. Meyer, 434 F.Supp. 32 (S.D.N.Y. 1977); Pic Design Corp. Sterling Precision Corp., 231 F.Supp. 106 (S.D.N.Y. 1964).

The copyright in a derivative or collective work, merely protects against copying or otherwise infringing the particular compilation or arrangement of a collective work, or the original contribution contained in the derivative work. Burroughs v. Metro-Goldwyn-Mayer, 683 F.2d 610, 632 (2nd Cir. 1982)(Newman, J., concurring); M. Kramer Mfg. Co. v. Andrews, 783 F.2d 421, 437 (4^th Cir. 1986); Harvey Cartoons v. Columbia Pictures Indus., Inc., 645 F.Supp. 1564, 1570 (S.D.N.Y. 1986)(1909 Act).

In Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991) the Supreme Court held that copyright protection in compilations "may extend only to those components of a work that are original to the author." Id. at 348, 111 S.Ct. at 1289.

Infringement of a compilation occurs only when it "feature[s] the same selection and arrangement" as the original compilation. Feist, 499 U.S. at 349, 111 S.Ct. at 1289 (emphasis added); see also Key Publications, Inc. v. Chinatown Today Publ'g Enters., Inc., 945 F.2d 509, 514 (2d Cir.1991) (holding that to establish infringement, a compilation copyright holder must demonstrate "substantial similarity between those elements, and only those elements, that provide copyrightability to the allegedly infringed compilation"). To determine whether two works contain a substantially similar arrangement, courts compare the ordering of material in the two works, finding infringement only when both compilations have featured a very similar literal ordering or format. See, e.g., Lipton v. Nature Co., 71 F.3d 464, 472 (2d Cir.1995) (finding infringement of arrangement when of 25 terms contained in copyrighted work, 21 are listed in same order on allegedly infringing work); Worth v. Selchow & Righter Co., 827 F.2d 569, 573 (9th Cir.1987) (holding that alphabetical arrangement of factual entries in a trivia encyclopedia was not copied by a copyrighted game that organized the factual entries by subject matter and random arrangement on game cards). Matthew Bender v. West, 158 F.3d 693, 704 (2nd Cir. 1998); Transwestern v. Multimedia, 133 F.3d 773, 776; 45 U.S.P.Q.2nd 1592 (10^th Cir. 1998).

Defendants’ alleged act of posting and electronically distributing one full chapter and a couple pages from two (2) other chapters of plaintiff’s compilation is not a violation of plaintiff’s copyright in its derivative or compiled work. Plaintiff has not alleged infringement of plaintiff’s "selection, arrangement, condensation, and revision of preexisting text." The complaint fails to state a cause of action for violation of plaintiff’s copyright in its derivative or compiled work.

Plaintiff fails to allege a copyright in contents of the seventeen (~17) offending pages. Complaint, ¶ 25; ¶ 26.

As to the contents of the seventeen (~17) pages that defendants have allegedly infringed, i.e., the "preexisting text," plaintiff has failed to allege registration of copyright. Moreover, the copyright registration provided to the court indicates that no registration had been made in the Copyright Office for an earlier version of the work, i.e., the "preexisting text,". Exhibit "A" to complaint, p. 2, §5. Registration of copyright in the work that is allegedly infringed is a jurisdictional requirement. 17 U.S.C. § 411. Techniques, Inc. v. Rohn, 592 F.Supp. 1195, 1197; 225 U.S.P.Q. 741 (S.D.N.Y. 1984)("Pursuant to 17 U.S.C. § 411(a) as well as its predecessor, § 13, it has been held repeatedly that ownership of a copyright registration is a jurisidictional prerequisite to an action for infringement. . . . A complaint which fails to plead compliance with § 411(a) is defective and subject to dismissal."); Grundberg v. The Upjohn Company, 137 F.R.D. 372, 382; 19 U.S.P.Q. 1590 (D. Ut. 1991). Lacking even an allegation of registration of copyright of the seventeen (~17) pages, this Court is without subject matter jurisdiction.

If plaintiff claims a copyright in the seventeen (~17) pages, plaintiff must so allege in order to state a cause of action. Supra. As to the contents of the seventeen (~17) pages at issue, plaintiff has failed to allege facts necessary to show ownership of a valid copyright:

1. when the pages were first published,

2. whether they were published in compliance with the applicable copyright law,

3. who was their author or creator,

4. whether they were published with any required copyright notices, and

5. whether any renewal copyright was properly registered if necessary.

17 U.S.C. § 409.

Plaintiff has failed to allege a cause of action for copyright infringement as to the offending seventeen (~17) pages because plaintiff has not alleged a copyright nor ownership of a copyright in those materials. Absent a valid copyright (or at least allegations thereof) this Court lacks subject matter jurisdiction.

CONCLUSION & RELIEF

WHEREFORE, these defendants request that the complaint be dismissed for failure to state a cause of action under Fed. R. Civ. P. 12(b)(6) and for lack of subject matter jurisdiction under Fed. R. Civ. P. 12(b)(1).

Dated this 12th day of NOVEMBER 1999.

UTAH LEGAL CLINIC
Attorneys for Defendants
Utah Lighthouse Ministry, Inc.,
Jerald Tanner and Sandra Tanner

 

By _________________

BRIAN M. BARNARD