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`Case 1:16-cv-00009-SM Document 33 Filed 02/27/17 Page 1 of 12
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`UNITED STATES DISTRICT COURT
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`DISTRICT OF NEW HAMPSHIRE
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`Intellitech Corporation,
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`Plaintiff
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`v.
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`The Institute of Electrical and
`Electronics Engineers,
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`Defendant
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`Case No. 16-cv-9-SM
`Opinion No. 2017 DNH 034
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`O R D E R
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`This is an action for copyright infringement. Plaintiff,
`Intellitech Corporation, alleges that defendant, The Institute
`of Electrical and Electronics Engineers (“IEEE”), infringed its
`registered work, entitled “Clause for a Pipeline v. 20.” By
`prior order, the court dismissed its claims against the
`individually named defendants. Defendant, IEEE, has also moved
`to dismiss the suit, pursuant to Fed. R. Civ. P. 12(b)(6), for
`failure to state a claim upon which relief can be granted.
`Defendant’s motion to dismiss is necessarily denied, as
`explained below.
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`Standard of Review
`When ruling on a motion to dismiss under Fed. R. Civ. P.
`12(b)(6), the court must “accept as true all well-pleaded facts
`set out in the complaint and indulge all reasonable inferences
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`in favor of the pleader.” SEC v. Tambone, 597 F.3d 436, 441
`(1st Cir. 2010). Although the complaint need only contain “a
`short and plain statement of the claim showing that the pleader
`is entitled to relief,” Fed. R. Civ. P. 8(a)(2), it must allege
`each of the essential elements of a viable cause of action and
`“contain sufficient factual matter, accepted as true, to state a
`claim to relief that is plausible on its face.” Ashcroft v.
`Iqbal, 556 U.S. 662, 678 (2009) (citation and internal
`punctuation omitted).
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`“Under Rule 12(b)(6), the district court may properly
`consider only facts and documents that are part of or
`incorporated into the complaint; if matters outside the
`pleadings are considered, the motion must be decided under the
`more stringent standards applicable to a Rule 56 motion for
`summary judgment.” Trans-Spec Truck Serv., Inc. v. Caterpillar
`Inc., 524 F.3d 315, 321 (1st Cir. 2008) (citing Garita Hotel
`Ltd. Partnership v. Ponce Fed. Bank, F.S.B., 958 F.2d 15, 18
`(1st Cir. 1992)). “When ... a complaint's factual allegations
`are expressly linked to — and admittedly dependent upon — a
`document (the authenticity of which is not challenged), that
`document effectively merges into the pleadings and the trial
`court can review it in deciding a motion to dismiss under Rule
`12(b)(6).” Id. (quoting Beddall v. State St. Bank & Trust Co.,
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`137 F.3d 12, 16–17 (1st Cir.1998) (additional citations
`omitted).
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`To survive a motion to dismiss, “a plaintiff's obligation
`to provide the ‘grounds' of his ‘entitle[ment] to relief’
`requires more than labels and conclusions, and a formulaic
`recitation of the elements of a cause of action will not do.”
`Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007) (citation
`omitted). Instead, the facts alleged in the complaint must, if
`credited as true, be sufficient to “nudge[ ] [plaintiff's]
`claims across the line from conceivable to plausible.” Id. at
`570. If, however, the “factual allegations in the complaint are
`too meager, vague, or conclusory to remove the possibility of
`relief from the realm of mere conjecture, the complaint is open
`to dismissal.” Tambone, 597 F.3d at 442.
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`
`Background
`The relevant facts, as set forth in plaintiff’s amended
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`complaint and construed in the light most favorable to
`Intellitech, are as follows. Intellitech is a New Hampshire
`corporation that possesses a portfolio of intellectual property
`assets, including the copyright relevant to this suit. That
`copyright, for the work entitled, “Clause for a Pipeline v. 20,”
`was registered with the United States Copyright Office on
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`October 24, 2014 (the “Work”). IEEE is a not-for-profit
`corporation, which promulgates standards regarding certain
`technical issues related to electrical and electronic endeavors.
`IEEE’s standards are developed collaboratively by working groups
`comprised of expert volunteers in the field.
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`The complaint alleges that IEEE caused derivatives of the
`work to be published without Intellitech’s permission or
`license. Intellitech alleges that, at some point, a derivative
`of the work was published and disseminated to members of an IEEE
`working group, specifically the “P1838 working group.” In
`October 2014, in response to Intellitech’s assertion of
`copyright ownership in the Work, IEEE reported that all copies
`of the Work would be removed from its servers. However, in
`December 2015, members of the P1838 working group again
`“published more than one derivative of the work while . . .
`indicating that no private entity owned a copyright in the
`material.” Compl. ¶ 26. Based on the above, Intellitech
`asserts a copyright infringement claim against IEEE.
`
`Discussion
`In support of its motion to dismiss, IEEE makes two
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`arguments. First, it says that, because plaintiff has only
`alleged a “limited publication” of the Work to IEEE working
`group members, Intellitech has not stated a viable claim for
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`copyright infringement. Second, IEEE argues that, even if
`Intellitech has sufficiently stated a claim for infringement,
`its claims for statutory damages and attorneys’ fees should be
`dismissed because Intellitech has failed to allege sufficient
`facts to support either claim.
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`(1) Consideration of Materials Outside the Pleadings
`Before reaching the merits of defendant’s arguments, the
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`court must first address defendant’s reliance on documents
`outside the pleadings. IEEE cites to declarations and exhibits
`filed by Intellitech, as well as to declarations and exhibits
`filed on its behalf. For purposes of this motion, the exhibits
`fall within two broad categories. The first category includes
`those documents related to the IEEE website, which, IEEE argues,
`is a private website that is password protected and accessible
`only by IEEE working group members. The second category
`includes documents consisting of IEEE working group meeting
`minutes and emails, which relate to the timing of the purported
`infringement.
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`IEEE argues that the court may consider these materials
`because they are referred to in plaintiff’s amended complaint,
`and because neither party disputes their authenticity. It
`points out that documents relating to the IEEE website were
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`submitted as an exhibit by Intellitech, as were some of the
`P1838 working group emails upon which IEEE relies. And, it
`argues, the working group meeting minutes, although filed by it,
`are properly considered because the activities of the P1838
`working group are directly referenced in Intellitech’s
`complaint. Intellitech seemingly does not dispute the
`authenticity of any of the documents, but does object generally
`to the court’s consideration of documents filed by IEEE.
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`As noted earlier, “[o]rdinarily . . . any consideration of
`documents not attached to the complaint, or not expressly
`incorporated therein, is forbidden, unless the proceeding is
`properly converted into one for summary judgment under Rule 56.
`See Fed. R. Civ. P. 12(b)(6). However, courts have allowed
`“exceptions for documents the authenticity of which [is] not
`disputed by the parties; for official public records; for
`documents central to plaintiffs' claim; or for documents
`sufficiently referred to in the complaint.” Watterson v. Page,
`987 F.2d 1, 3 (1st Cir. 1993) (citations omitted). Here, as
`IEEE states, documents relating to the IEEE website were filed
`by Intellitech, and it seemingly does not dispute their
`authenticity. Accordingly, the court will consider the printout
`of the specific IEEE website (docket no. 14-15). For identical
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`reasons, the court will also consider the September 11, 2014,
`email from Kathryn Bennett (document no. 14-12).
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`The same cannot be said, however, with respect to the
`authenticity of documents filed by or on behalf of IEEE,
`specifically, the P1838 working group meeting minutes and the
`declaration of IEEE employee Kathryn Bennett. IEEE does not
`argue that those documents are central to Intellitech’s claim.
`And, the complaint’s passing references to the “activities” of
`the P1838 working group and the P1838 working group meeting
`minutes do not rise to the level of “sufficiently referred to in
`the complaint.” While the complaint does discuss the
`“activities” of the P1838 working group, at no point does the
`complaint reference the working group meeting minutes. Passing
`references to the general activities of the P1838 working group
`are not enough to qualify specific meeting minutes as
`“sufficiently referred to in the complaint.” Watterson, 987
`F.2d at 3; cf., Freeman v. Town of Hudson, 714 F.3d 29, 36 (1st
`Cir. 2013).
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`(2) “Limited Publication”
`Moving to the substance of IEEE’s arguments, the court
`first considers its argument concerning “limited publication” of
`the purported derivative work. IEEE argues that Intellitech’s
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`sole allegation of infringement is that IEEE “violated
`plaintiff’s copyright by distributing or publishing the Work on
`the P1838 Private Site.” Def.’s Mem. in Support of Mot. to
`Dismiss at 5. So, IEEE says, because the publication at issue
`was limited to members of the P1838 working group, Intellitech
`fails to sufficiently allege “publication,” and therefore has
`not stated a viable infringement claim as a matter of law.
`Plaintiff disagrees, countering that its copyright infringement
`claim is not based exclusively on defendant’s publication of the
`Work, but on defendant’s unauthorized creation of derivative
`works as well.
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`“[T]he Copyright Act grants the copyright holder
`‘exclusive’ rights to use and to authorize the use of his work
`in five qualified ways,” Sony Corp. of America v. Universal City
`Studios, Inc., 464 U.S. 417, 432–33 (1984), including the right
`to prepare derivative works based upon the copyrighted work, and
`“to distribute copies . . . of the copyrighted work to the
`public by sale or other transfer of ownership, or by rental,
`lease or lending.” 17 U.S.C. § 106. “Anyone who violates any
`of the exclusive rights of the copyright owner,’ that is, anyone
`who trespasses into his exclusive domain by using or authorizing
`the use of the copyrighted work in one of the five ways set
`forth in [17 U.S.C. § 106], ‘is an infringer of the copyright.’”
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`Sony Corp., 464 U.S. at 433 (quoting 17 U.S.C. § 501(a)). “To
`establish copyright infringement, the plaintiff must prove two
`elements: ‘(1) ownership of a valid copyright, and (2) copying
`of constituent elements of the work that are original.’” Latin
`Am. Music Co. v. Media Power Grp., Inc., 705 F.3d 34, 38 (1st
`Cir. 2013) (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co.,
`499 U.S. 340, 361 (1991)).
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`Read generously at this stage, the complaint states a
`viable claim for infringement based not only on IEEE’s purported
`publication of the Work, but based on its purported creation of
`a derivative work as well. The complaint alleges the
`Intellitech’s ownership of a valid copyright (see, e.g., compl.
`at ¶ 19), and that IEEE wrongfully used its Work in at least one
`of the ways described in 17 U.S.C. § 106. More specifically,
`Intellitech’s complaint alleges that its copyright was infringed
`when IEEE published derivatives of the Work to the P1838 working
`group. See, e.g., Compl. at ¶ 22. Implicit in that allegation
`is that IEEE created a derivative of the Work at issue, and then
`distributed that derivative to members of the P1838 working
`group. While plaintiff’s complaint is pretty thin, it
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`Case 1:16-cv-00009-SM Document 33 Filed 02/27/17 Page 10 of 12
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`sufficiently states a copyright infringement claim for Rule
`12(b)(6) purposes.1
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`(3) Statutory Damages and Attorneys’ Fees
`In the alternative, IEEE suggests that Intellitech’s claims
`for statutory damages and attorneys’ fees, pursuant to 17 U.S.C.
`§§ 504 and 505, should be dismissed because both claims are
`precluded by 17 U.S.C. § 412. That section provides: “no award
`of statutory damages or of attorney’s fees, as provided by
`sections 504 and 505, shall be made for: (1) any infringement of
`a copyright in an unpublished work commenced before the
`effective date of its registration; or (2) any infringement of
`copyright commenced after first publication of the work and
`before the effective date of its registration, unless such
`registration is made within three months after the first
`publication of the work.” 17 U.S.C. § 412.
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`1
`IEEE is likely correct that infringement of the
`“distribution right” requires actual dissemination to the
`public. See Atl. Recording Corp. v. Howell, 554 F. Supp. 2d
`976, 981 (D. Ariz. 2008) (collecting authority); see also
`London-Sire Records, Inc. v. Doe 1, 542 F. Supp. 2d 153, 168-69
`(D. Mass. 2008). However, because defendant’s argument relies
`extensively on facts beyond plaintiff’s complaint, it is not
`ripe at this stage of the litigation. For example, IEEE argues
`that the purported derivative work was distributed to members of
`the P1838 working group “for the limited purpose of developing a
`new IEEE standard.” Def.’s Mot. to Dismiss at p. 6. That
`factual allegation is well outside the scope of the complaint.
`It is an argument more appropriately made in the summary
`judgment context.
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`Relying upon the P1838 working group meeting minutes, IEEE
`construes Intellitech’s complaint as alleging that it first
`infringed the copyright at some point during the summer of 2014,
`well before the Work’s registration date (October 24, 2014).
`Intellitech’s allegations that IEEE infringed the copyright in
`December of 2015 do not alter the analysis, it argues, because
`the alleged December 2015 infringement constitutes a mere
`continuation of IEEE’s alleged earlier pre-registration
`infringement. IEEE also argues that statutory damages and
`attorneys’ fees are precluded because plaintiff failed to
`register the Work within three months after its first
`publication, which, it says, occurred in April or May of 2014.
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`IEEE’s points may well have dispositive merit. But, given
`the allegations in the complaint, the initial date of purported
`infringement, or the date plaintiff first published the Work,
`cannot be definitively determined. IEEE’s arguments rely
`entirely on documents and facts outside Intellitech’s complaint,
`and so are not properly before the court. These, too, are
`arguments more appropriately made in the summary judgment
`context.
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`Case 1:16-cv-00009-SM Document 33 Filed 02/27/17 Page 12 of 12
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`Conclusion
`For the reasons set forth herein, the IEEE’s motion to
`dismiss (document no. 21) is necessarily denied.
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`SO ORDERED.
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`____________________________
`Steven J. McAuliffe
`United States District Judge
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`February 27, 2017
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`cc: Todd A. Sullivan, Esq.
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`Jeffrey C. Spear, Esq.
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