Case 1:10-cv-00620-CMH-TCB Document 23 Filed 08/04/10 Page 1 of 9 PageID# 172
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE EASTERN DISTRICT OF VIRGINIA
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`Alexandria Division
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`DIANA CHRISTEN,
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`Plaintiff,
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`v-
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`IPARADIGMS, LLC,
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`Defendant.
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`CLERK, U.S. DISTRICT COURT
`ALEXANDRIA, VIRGINIA
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`Civil Action l:10cv620
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`MEMORANUDM OPINION
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`This case is before the Court on Defendant's Motion To
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`Dismiss, Plaintiff's Motion To Remand and Plaintiff's Motion To
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`Strike.
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`iParadigms owns and operates Turnitin, an online technology
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`system used by educational institutions to evaluate the
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`originality of written works in order to prevent plagiarism.
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`Works may be uploaded to Turnitin by instructors or by students
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`themselves. After a copy of the work is electronically uploaded
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`to Turnitin, the system compares the work electronically to
`
`content available on the internet, student works previously
`
`submitted to Turnitin and commercial databases of journal
`
`articles and periodicals. Turnitin then produced an Originality
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE EASTERN DISTRICT OF VIRGINIA
`
`Alexandria Division
`
`DIANA CHRISTEN,
`
`Plaintiff,
`
`v-
`
`IPARADIGMS, LLC,
`
`Defendant.
`
`)
`
`)
`
`)
`
`)
`)
`)
`
`)
`
`)
`
`)
`
`CLERK, U.S. DISTRICT COURT
`ALEXANDRIA, VIRGINIA
`
`Civil Action l:10cv620
`
`MEMORANUDM OPINION
`
`This case is before the Court on Defendant's Motion To
`
`Dismiss, Plaintiff's Motion To Remand and Plaintiff's Motion To
`
`Strike.
`
`iParadigms owns and operates Turnitin, an online technology
`
`system used by educational institutions to evaluate the
`
`originality of written works in order to prevent plagiarism.
`
`Works may be uploaded to Turnitin by instructors or by students
`
`themselves. After a copy of the work is electronically uploaded
`
`to Turnitin, the system compares the work electronically to
`
`content available on the internet, student works previously
`
`submitted to Turnitin and commercial databases of journal
`
`articles and periodicals. Turnitin then produced an Originality
`
`
`
`Case 1:10-cv-00620-CMH-TCB Document 23 Filed 08/04/10 Page 2 of 9 PageID# 173
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`Report which provides a percentage of the work that appears not
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`to be original.
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`Schools that participate in the Turnitin system may choose
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`to archive student works, which then become part of the database
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`used by Turnitin to evaluate the originality of other students'
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`works in the future. If this option is selected the archived
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`work is then stored as digital code.
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`According to the Complaint, Plaintiff was a graduate
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`student at the University of Central Florida who allegedly
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`learned that two of her papers were submitted into the Turnitin
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`System by her instructor.
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`Plaintiff alleges that she has never consented to
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`iParadigms' commercial use of her manuscripts, nor to the use or
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`retention in its databases of name, other personal information,
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`and confidential information contained in the manuscripts that
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`she believed, and had every right to believe, would not be
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`shared with others by her professor, and certainly would not be
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`placed in a commercial database accessible via computer by
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`millions of people worldwide.
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`Plaintiff alleges that through its use of her papers,
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`iParadigms has "unlawfully detained" Plaintiff's property. She
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`-2-
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`Case 1:10-cv-00620-CMH-TCB Document 23 Filed 08/04/10 Page 3 of 9 PageID# 174
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`asserts claims for replevin (Count I) , conversion (Count II) ,
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`and unjust enrichment (Count III).
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`In the spring of 2 007, Plaintiff's counsel, on behalf of
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`four (4) high school students, filed suit in this Court for
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`copyright infringement based upon the archiving of papers in the
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`Turnitin System. Approximately one-year later, in March 2008,
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`this Court granted summary judgment dismissing Plaintiff's
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`copyright claim holding that the only act of copyright
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`infringement alleged by Plaintiff - the digital archiving of
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`their student papers - constituted fair use under 17 U.S.C. §
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`107.
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`Plaintiff's counsel, both as next friend and as counsel to
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`the four high school students, appealed to the United States
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`Court of Appeals for the Fourth Circuit. In April 2009, the
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`Fourth Circuit issued a unanimous, published decision affirming
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`this Court's decision on all four fair use factors.
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`See A.V.
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`ex. rel. Vanderhye v. iParadigms, LLC, 562 F.3d at 630 (4th Cir.
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`2009).
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`Congress has specifically preempted all state-law rights
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`that are equivalent to those protected under federal copyright
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`law.
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`See 17 U.S.C. § 301(a).
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`For preemption to apply, a two-
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`prong test must be met: (1) the work must be "within the scope
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`of the subject-matter of copyright as specified in 17 U.S.C. §§
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`-3-
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`Case 1:10-cv-00620-CMH-TCB Document 23 Filed 08/04/10 Page 4 of 9 PageID# 175
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`102, 103"; and (2) the "rights granted under state law must be
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`equivalent to any exclusive rights within the scope of federal
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`copyright as set out in 17 U.S.C. § 106." United States ex rel.
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`Berge v. Board of Trs. of the Univ. of Ala., 104 F.3d 1453, 1463
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`(4th Cir.1997) (internal quotation marks omitted); Madison River
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`Mgmt. Co. v. Bus. Mgmt. Software Corp., 351 F. Supp. 2d 436, 442
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`(M.D.N.C. 2005). Any state-law claims that are preempted must be
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`dismissed. See, e.g., id.
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`The second prong of the preemption test is satisfied unless
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`there is an "extra element" that changes the nature of the state
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`law action so that it is "qualitatively different from a
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`copyright infringement claim."
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`Berge,
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`104
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`F.3d at
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`1463
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`(quotation omitted).
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`A copyright infringement claim alleges,
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`inter alia, that the defendant copied original elements of the
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`copyrighted work or encroached upon an exclusive right conferred
`
`by the copyright. See Trandes Corp. v. Guy F. Atkinson Co., 996
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`F.2d 655, 660 (4th Cir. 1993); see also Madison River Mgmt., 351
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`F. Supp. 2d at 443 (citing Avtec Sys., Inc. v. Peiffer, 21 F.3d
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`568, 571 (4th Cir.1994)). "The exclusive rights conferred by a
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`copyright are to reproduce the copyrighted work, prepare
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`derivative works, distribute copies of the work, and perform or
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`display the work publicly." Madison River Mqmt., 351 F. Supp. 2d
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`at 443 (citing 17 U.S.C. § 106).
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`-4-
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`Case 1:10-cv-00620-CMH-TCB Document 23 Filed 08/04/10 Page 5 of 9 PageID# 176
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`Here, there can be no question that the works at issue --
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`Plaintiff's unpublished manuscripts - fall within the subject-
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`matter of copyright protection.
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`The Copyright Act explicitly
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`states that the subject matter of copyright extends to any
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`literary works that are fixed in any tangible medium of
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`expression. Copyright Act § 102.
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`See also Berge, 104 F.3d at
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`1463.
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`Thus, claims are preempted unless they seek to vindicate
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`rights that are "qualitatively different" from those that are
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`protected by copyright infringement claims.
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`Plaintiff's conversion claim (Count II) alleges that, in
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`storing digital copies of Plaintiff's manuscripts in its
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`database, iParadigms has deprived
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`Plaintiff of her exclusive
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`rights to her property. Plaintiff does not claim that iParadigms
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`has unlawfully retained the tangible manuscripts themselves.
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`Instead, Plaintiff alleges that iParadigms has stored and
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`commercially used copies of the manuscripts on its system and
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`accordingly demands the purging of the copies.
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`It is clear on its face that the conversion claim is simply
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`a copyright infringement claim dressed in state-law clothing.
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`Indeed, the claim seeks to hold defendant liable for encroaching
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`on one of the exclusive rights granted by the Copyright Act --
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`i-e. , the right to use and reproduce the copyrighted work.
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`See
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`Trandes Corp. , 996 F.2d at 660. Accordingly, as courts in this
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`-5-
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`Case 1:10-cv-00620-CMH-TCB Document 23 Filed 08/04/10 Page 6 of 9 PageID# 177
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`Circuit have routinely recognized,
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`conversion claims are
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`preempted.
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`See, e.g., Microstrategy, Inc. v. Netsolve, Inc.,
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`368 F. Supp. 2d 533, 536 (E.D. Va. 2005) {"The Court grants
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`Defendant's motion to dismiss the conversion claim because
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`Plaintiff alleges no physical object was unlawfully retained by
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`Defendant."); Trandes Corp., 996 F.2d at 659 (stating that
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`allegations of "mere reproduction" are insufficient to avoid
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`preemption by the Copyright Act); College of Charleston
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`Foundation v. Ham, 585 F. Supp. 2d 737, 748 (D.S.C. 2008)
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`("Federal courts, then, have generally found that when a
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`conversion claim encroaches upon the subject matter covered
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`under federal copyright law, the claim is preempted and should
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`be brought as a copyright claim."); Kinderqartners Count, Inc.
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`v. Demoulin, 171 F. Supp. 2d 1183, 1193 (D. Kan. 2001) ("[I]f
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`the plaintiff is only seeking damages from the defendant's
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`reproduction of a work --
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`and not the actual return of a
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`physical piece of property --
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`the claim is preempted."); l
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`Melville B. Nimmer & David Nimmer, Nimmer on Copyright §
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`1.01[B][l] at 1-57 (2010) (stating that conversion claims based
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`on "unauthorized reproductions" are preempted).
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`Moreover, because Plaintiff has not alleged that iParadigms
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`is retaining a physical object that itself belongs to the
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`Plaintiff, dismissal of Plaintiff's conversion claim is mandated
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`-6-
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`Case 1:10-cv-00620-CMH-TCB Document 23 Filed 08/04/10 Page 7 of 9 PageID# 178
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`by Fourth Circuit precedent.
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`See, e.g., Berge, 104 F.3d at
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`1463-64 (a conversion claim is preempted unless a plaintiff
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`claims to own the object in which the intellectual property is
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`nembod[ied]"). Here, Plaintiff does not claim that she owns the
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`digital code in which her work is stored on the Tumitin system;
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`instead, she claims she owns the intellectual property stored in
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`that code,
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`a claim that is equivalent to a copyright
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`infringement claim and therefore preempted.
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`Plaintiff's replevin claim (Count I) alleges that defendant
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`retains copies of Plaintiff's manuscripts in its database.
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`Plaintiff asks the Court to order Defendant to purge the
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`documents from its databases and to award damages for the
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`detention of her work.
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`Like Plaintiff's conversion claim, the replevin claim
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`complains of Defendant's use and retention of a copy of her
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`manuscripts and thus seeks to vindicate a right that is the
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`exclusive province of the Copyright Act. Thus, Plaintiff's
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`replevin claim (Count I) is also preempted.
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`Moreover, no claim for replevin is available under Virginia
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`law.
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`See Virginia Code §8.01-218, "Replevin abolished" ("No
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`action of replevin shall be hereafter brought."). Finally,
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`Plaintiff's replevin claim would fail even if it were a
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`recognized cause of action in Virginia because replevin seeks
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`-7-
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`Case 1:10-cv-00620-CMH-TCB Document 23 Filed 08/04/10 Page 8 of 9 PageID# 179
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`recovery of a specific piece of tangible property.
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`Here,
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`Plaintiff seeks destruction of the digital code that is stored
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`in defendant's databases, which is not tangible property and
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`therefore not the proper subject of a replevin suit.
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`Plaintiff's unjust enrichment claim (Count III) alleges
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`that iParadigms received a commercial benefit from the use of
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`Plaintiff's property.
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`Like Plaintiff's conversion claim, the
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`unjust enrichment claim requests that the Court order iParadigms
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`to purge the unpublished manuscripts from its databases. Because
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`it is well settled that unjust enrichment claims based on
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`copying are preempted by the Copyright Act, this claim should be
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`dismissed.
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`According to the Complaint, the benefits received by
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`Defendant are the copies of Plaintiff's papers that are stored
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`in the iParadigms database as computer code.
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`The alleged
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`wrongful act,
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`according to Plaintiff,
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`is
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`the use and
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`reproduction of those papers, a claim that falls squarely within
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`the protections afforded by the Copyright Act.
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`As the courts
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`that have considered the question have held, unjust enrichment
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`claims based on allegations of unfair copying and use are
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`preempted, and therefore Plaintiff's unjust enrichment claim
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`must be dismissed. See, e.g., Microstrateqy, 368 F. Supp. 2d at
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`537-38 (unjust enrichment claim alleging unlawful use and
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`-8-
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`Case 1:10-cv-00620-CMH-TCB Document 23 Filed 08/04/10 Page 9 of 9 PageID# 180
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`retention of software preempted by the Copyright Act) ;
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`Collezione Europa U.S.A., Inc. v. Hillsdale House, Ltd. 243 F.
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`Supp. 2d 444, 450-51 (M.D.N.C. 2003)
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`(noting that unjust
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`enrichment claims typically survive preemption only when they
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`allege a "quasicontractual relationship between parties");
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`Costar Group, Inc. v. LoopNet, Inc., 164 F. Supp. 2d 688
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`(D.Md.2001), aff'd, 373 F.3d 544 (4th Cir.2004); Nimmer &
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`Nimmer, § 1.01[B][l] at 1-51 (2010) {"[A] state law cause of
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`action for unjust enrichment .
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`.
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`. should be regarded as an
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`"equivalent right" and hence, pre-empted").
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`For the foregoing reasons, Plaintiff's claims are pre
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`empted by the Copyright Act and must be dismissed, Plaintiff's
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`Motion For Remand should be denied and Plaintiff's Motion To
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`Strike denied.
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`An appropriate Order shall issue.
`
`/s/
`
`Claude M. Hilton
`
`United States District Judge
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`Alexandria, Virginia
`August -^
`, 2010
`
`-9-
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