Diversey v. Schmidly

FILED
United States Court of Appeals
PUBLISH Tenth Circuit

UNITED STATES COURT OF APPEALS December 23, 2013

Elisabeth A. Shumaker
TENTH CIRCUIT Clerk of Court

ANDREW DIVERSEY,

Plaintiff – Appellant,

v. No. 13-2058

DAVID SCHMIDLY; RICHARD
HOLDER; CHARLES FLEDDERMANN;
JAMES KOCH; RAYMOND SANCHEZ;
MARTHA BEDARD; JACK FORTNER,
all individually and in their official
capacities,

Defendants – Appellees.

Appeal from the United States District Court
for the District of New Mexico
(D.C. No. 1:12-CV-00651-SMV-WDS)

Submitted on the briefs:

Andrew Diversey, Plaintiff-Appellant, Pro Se.

Kimberly N. Bell, Associate University Counsel, The University of New Mexico,


After examining the briefs and appellate record, this panel has determined
unanimously that oral argument would not materially assist the determination of this
appeal. See Fed. R. App. P. 34(f); 10th Cir. R. 34.1(G). The case is therefore submitted
without oral argument.
Albuquerque, New Mexico, for Defendants – Appellees.

Before MATHESON, Circuit Judge, PORFILIO, and O'BRIEN, Senior Circuit Judges.

O’BRIEN, Senior Circuit Judge.

Andrew Diversey sued several administrators and members of the Board of

Regents of the University of New Mexico (UNM) for infringing his copyright to an

unpublished dissertation. The district court dismissed Diversey’s complaint as untimely

under Fed. R. Civ. P. 12(b)(6). Our review requires us to determine when claims of

copyright infringement accrue, and, in particular, whether accrual is delayed until a

continuing course of infringement ceases. Barring the application of an appropriate

tolling principle, a copyright infringement claim must be brought within three years of

the date on which the plaintiff becomes aware of an act of infringement or becomes

chargeable with knowledge of it. Applying this rule, we affirm in part and reverse in

part.

BACKGROUND AND PROCEDURAL HISTORY

Since we accept all well pleaded facts as true, our factual recitation comes

primarily from Diversey’s amended complaint. He was a doctor-of-philosophy (Ph.D.)

student studying linguistics at the University of New Mexico. His complaint paints a

picture of intractable difficulties with the members of his dissertation committee. The

members did not provide him with mentorship or feedback on his dissertation drafts, even

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after he complained to departmental and university administrators, including Charles

Fleddermann, UNM’s Dean of Graduate Studies. Diversey claims the dissertation

committee failed to review the final draft of the dissertation, and says, “[t]he dissertation

must . . . be fully reviewed and evaluated in its final form by the committee members and

director before being officially approved and submitted; otherwise it is illegitimate and

thus of no academic value. “ (R. Vol. I at 68.)

As Diversey continued to attempt to convince UNM officials to correct the

deficiencies in the dissertation process, he provided a copy of the draft dissertation to

UNM Dissertation Coordinator Doug Weintraub, who volunteered to proofread it.

Before Weintraub could do so, Fleddermann allegedly confiscated the draft. On

February 7, 2008, UNM Deputy Provost Richard Holder wrote Diversey to advise him

the dissertation had been deposited in the Zimmerman Library at UNM. The draft

dissertation was also sent to ProQuest, UNM’s dissertation publisher. On February 20,

2008, a ProQuest representative confirmed receipt of the draft dissertation. On

Diversey’s protest, ProQuest returned the manuscript to UNM.

Diversey escalated his complaints: he contacted UNM’s President, its Dean of

Student Affairs, and several members and officers of UNM’s Board of Regents to no

avail. Then, on June 16, 2009, Diversey discovered two copies of his dissertation: one in

UNM’s Zimmerman Library and another in the collection of the Zimmerman Library’s

Center for Southwest Research. These copies were available to the general public.

Diversey wrote each of the appellees, including the Dean of University Libraries, citing

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his copyright and requesting the return of all copies of his dissertation. On October 5,

2009, UNM’s counsel sent Diversey a letter refusing Diversey’s request.1

On June 15, 2012, Diversey filed a complaint for copyright infringement. In

dismissing the case, the magistrate judge2 concluded the copyright infringement claims

accrued in February 2008 when Diversey was notified of the dissertation’s deposit in the

Zimmerman Library and became aware it had been sent to ProQuest. Thus, he

concluded, the three-year limitation period elapsed by February 2011, and Diversey’s

June 2012 complaint was not timely. He also rejected Diversey’s argument that UNM’s

ongoing distribution of his work in its libraries was a continuing infringement for which

the cause of action did not accrue until the infringement ceased.

DISCUSSION

Our review of a Fed. R. Civ. P. 12(b)(6) dismissal is de novo. Coll v. First Am.

Title Ins. Co., 642 F.3d 876, 886 (10th Cir. 2011). We accept the well-pled factual

allegations in the complaint as true, “resolve all reasonable inferences in the plaintiff’s

favor,” Morse v. Regents of the Univ. of Colo., 154 F.3d 1124, 1126-27 (10th Cir. 1998),

and “ask whether it is plausible that the plaintiff is entitled to relief.” Bixler v. Foster,

1
According to the letter, UNM officials believed they had “certain non-exclusive
rights in the dissertation, e.g., an implied license to keep copies of the dissertation at the
University Libraries and to catalog the work.” (R. Vol. I at 85.)
2
The parties consented to have their case heard and decided by a magistrate judge.
See 28 U.S.C. § 636(c); Fed. R. Civ. P. 73(a). Under this procedure, Diversey properly
appealed directly to this court. See 28 U.S.C. § 636(c)(3); Fed. R. Civ. P. 73(c).

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596 F.3d 751, 756 (10th Cir. 2010) (quotations omitted) (applying the “plausibility”

pleading standard articulated in Ashcroft v. Iqbal, 556 U.S. 662 (2009), and Bell Atl.

Corp. v. Twombly, 550 U.S. 544 (2007)). We also liberally construe Diversey’s pro se

pleadings. Hall v. Bellmon, 935 F.2d 1106, 1110 (10th Cir. 1991). Thus, if we “can

reasonably read the pleadings to state a valid claim on which the plaintiff could prevail,

[we] should do so despite the plaintiff’s failure to cite proper legal authority, his

confusion of various legal theories, his poor syntax and sentence construction, or his

unfamiliarity with pleading requirements.” Id.

We first examine and apply the law relating to the limitation period applicable to

Diversey’s claims. Then, we examine the two alternative rationales the appellees assert

in defense of the dismissal.3

A. Limitation Period for Copyright Infringement Claims

A claim for copyright infringement must be brought “within three years after the

claim accrued.” 17 U.S.C. § 507(b). Under the majority view, a claim “for copyright

infringement accrues when one has knowledge of a violation or is chargeable with such

3
The transcript of the district court’s motion on the appellee’s motion to dismiss
reflects some discussion as to whether the doctrine of qualified immunity protects the
appellees from liability for their actions. During this discussion, neither party discussed
the explicit immunity-stripping provisions of 17 U.S.C. §§ 501(a) and 511(a). See also
Nat’l Ass’n of Bds. of Pharmacy v. Bd. of Regents of the Univ. Sys. of Ga., 633 F.3d
1297, 1313-15 (11th Cir. 2011) (discussing immunity issues in copyright infringement
cases). Because the appellees have not urged affirmance on this alternative ground and
because the issue presents possibly thorny questions, we do not address it. The initial
furrow in the plowing of such rocky ground is best turned by the district court.

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knowledge.” Roley v. New World Pictures, Ltd., 19 F.3d 479, 481 (9th Cir. 1994); see

Hotaling v. Church of Jesus Christ of Latter-Day Saints, 118 F.3d 199, 202 (4th Cir.

1997). The statute is evenhanded; “‘[i]t does not provide for a waiver of infringing acts

within the limitation period if earlier infringements were discovered and not sued upon,

nor does it provide for any reach back if an act of infringement occurs within the

statutory period.’” Roley, 19 F.3d at 481 (quoting Hoey v. Dexel Sys. Corp., 716 F. Supp.

222, 223 (E.D. Va. 1989)); accord Bridgeport Music, Inc. v. Diamond Time, Ltd., 371

F.3d 883, 889 (6th Cir. 2004); Hotaling, 118 F.3d at 202; Makedwde Pub. Co. v.

Johnson, 37 F.3d 180, 182 (5th Cir. 1994); Stone v. Williams, 970 F.2d 1043, 1049-50

(2d Cir. 1992).4 In other words, the majority view rejects the notion that a plaintiff can

recover for acts of infringement occurring more than three years before the filing of a

complaint merely because some related act of infringement occurs within the limitation

period.

Diversey relies in part on the minority interpretation of § 507(b)’s limitation

period, which applies a “continuing wrong” exception. The most prominent of the cases

advancing this minority interpretation is the Seventh Circuit’s decision in Taylor v.

Meirick,712 F.2d 1112 (7th Cir. 1983). There, the court rescued a plaintiff’s contributory

4
The district courts within this circuit have generally taken this view. See
Rocking Chair Enters. v. Macerich SCG Ltd., 407 F. Supp. 2d 1263, 1266-67 (W.D.
Okla. 2005); Fisher v. United Feature Syndicate, Inc., 37 F. Supp. 2d 1213, 1217 (D.
Colo. 1999); In re Indep. Servs. Orgs. Antitrust Litig., 964 F. Supp. 1469, 1478 (D. Kan.
1997).

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infringement claims from the statute of limitations; under ordinary tort principles, it

reasoned, the limitation period “does not begin to run on a continuing wrong till the

wrong is over and done with.” Id. at 1118; see also United States v. Shabazz, 724 F.2d

1536, 1540 (11th Cir. 1984) (applying the then-three-year limitation period for criminal

prosecutions of copyright infringements in a comparable fashion);5 Baxter v. Curtis

Indus., 201 F. Supp. 100, 101 (N.D. Ohio 1962). Even though some of the plaintiff’s

claims against the defendant’s own copyright infringements may have been barred under

§ 507(b), the Taylor court concluded the defendant was still contributorily liable for the

infringing sales of retailers to whom the defendant wholesaled his infringing copies, as

long as those sales occurred before the limitation period elapsed. See Taylor, 712 F.2d at

1118-19.

The minority view is not compelling. First, the statute itself says nothing to

support a special limitation rule for “continuing wrongs.” See 17 U.S.C. § 507(b); Roley,

19 F.3d at 481 (“Section 507(b) is clear on its face.”). Second, although the minority

view seems intended to ensure copyright infringers do not escape liability when their

infringing acts are obfuscated by the stream of commerce, the majority accrual rule and

tolling principles adequately protect copyright owners’ rights in such situations. The

limitation period never begins to run until the plaintiff knows or has reason to know of

5
But see Makedwde, 37 F.3d at 181 n.2 (“We do not understand the Shabazz
opinion to rely on a continuing tort type theory.”).

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the infringement. Roley, 19 F.3d at 481. Moreover, when an infringer’s actions are

calculated to deceive the plaintiff, the accrual may be tolled even further. See Taylor,

712 F.2d at 1118 (observing a copyright infringement plaintiff is entitled to tolling when

the defendant’s actions are “calculated to obstruct any inquiry [plaintiff] might have

made”). Indeed, this tolling principle alone would have been sufficient to allow the

Taylor plaintiff relief from the statute of limitations. Id. at 1119 (“[E]ither of the tolling

principles discussed earlier would allow [plaintiff] to collect damages for acts of

infringement more than three years in the past, at least if he acted promptly once he

discovered them . . . .”). Accordingly, we reject as unnecessary the “continuing wrong”

doctrine in the copyright infringement context and adopt the majority view.

B. Copying and Distribution Claims

Diversey contends the district court erred in concluding his claims were barred

under the three-year limitation period. In particular, he argues the judge erred by “failing

to recognize separate . . . accrual dates for each distinct infringement.” (Appellant Br. at

16.) We agree and conclude Diversey’s claim for infringement of his distribution right is

not time-barred.

Diversey argues “there are actually several distinct copyright infringements giving

rise to several independent claims for relief, each of which has its own corresponding . . .

accrual date.” (Appellant Br. at 17.) According to his amended complaint, there were

two alleged infringements. First, his exclusive right to make copies was infringed when

the draft dissertation was reproduced for deposit in UNM’s Zimmerman Library and its

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Center for Southwest Research. See 17 U.S.C. § 106(1) (giving the copyright owner the

exclusive right “to reproduce the copyrighted work in copies”). Second, his exclusive

right to distribute his work was allegedly infringed when the University listed his work in

its library catalog for public lending. See 17 U.S.C. § 106(3) (giving the copyright owner

the exclusive right “to distribute copies . . . of the copyrighted work to the public by

sale . . . or by rental, lease, or lending”).

As to the copies made for deposit in the libraries, the judge’s analysis was correct.

Holder’s February 7, 2008, letter apprised Diversey of the deposit of his dissertation in

Zimmerman Library, which also houses the collection of the Center for Southwest

Research. This notice appears to have been effective, as it prompted Diversey to contact

ProQuest, UNM’s dissertation publisher, to inquire as to whether it, too, had received a

copy of the draft dissertation.6 When ProQuest confirmed it had received a copy on

February 20, 2008, Diversey knew at least one unauthorized copy had been made. Thus,

his claim for unauthorized copying under § 106(1) accrued no later than February 20,

2008. His June 15, 2012, complaint was not timely.

However, Diversey’s claim of unauthorized distribution under § 106(3) must be

separately considered. See Bridgeport Music, Inc. v. Rhyme Syndicate Music, 376 F.3d

615, 621 (6th Cir. 2004) (“[E]ach act of infringement is a distinct harm.”); see also Roley,

6
According to the amended complaint, the copy sent to ProQuest was the
authorized copy Diversey handed over to Weintraub. Thus, it appears only the copies
placed in Zimmerman Library were unauthorized.

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19 F.3d at 481 (observing that a copyright infringement claim “may be brought for all

acts that accrued within the three years preceding the filing of the suit.”). As Diversey

points out, § 106(3) explicitly protects the copyright owner’s exclusive right to distribute

copies by lending. See Hotaling, 118 F.3d at 203 (“When a public library adds a work to

its collection, lists the work in its index or catalog system, and makes the work available

to the borrowing or browsing public, it has completed all the steps necessary for

distribution to the public.”); 2 Melville Nimmer & David Nimmer, Nimmer on Copyright

§ 8.11[B][4][d] at 8-154.10 (2013) (“No consummated act of actual distribution need be

demonstrated . . . to implicate the copyright owner’s distribution right.”).7 We see no

7
The appellees argue merely listing the work in the libraries’ catalog information
system does not violate Diversey’s distribution right. They say Diversey must (but has
failed to) allege the libraries actually distributed an unauthorized copy to a member of the
public. They cite Atlantic Recording Corp. v. Howell, 554 F. Supp. 2d 976 (D. Ariz.
2008) to suggest “‘§ 106(3) is not violated unless the defendant has actually distributed
an unauthorized copy of the work to a member of the public.’” (Appellee’s Br. 14
(quoting Howell, 554 F. Supp. 2d at 883).)
Howell does reflect some dissensus, particularly among district courts, about the
applicability of Hotaling’s holding to cases of Internet file-sharing. We need not delve
into the file-sharing issue today. Hotaling, like this case, involves a public library
making “the work available to the borrowing or browsing public.” Hotaling, 118 F.3d at
203. A patron could “visit the library and use the work.” See id. This is the essence of a
violation of the copyright owner’s exclusive right to distribute his work via lending. See
17 U.S.C. § 106(3); Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 552
(1985) (noting § 106(3) gives the copyright owner “the right to control the first public
distribution . . . of his work” (quotation omitted)); Peter S. Menell, In Search of
Copyright’s Lost Ark: Interpreting the Right to Distribute in the Internet Age, 59 J.
Copyright Soc’y U.S.A. 1, 52-66 (2011) (analyzing the legislative history regarding the
distribution right and concluding the requirement of actual distribution of an
unauthorized copy is unwarranted).

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reason Diversey should have known about the UNM libraries’ distribution of his work

before June 16, 2009, when he discovered his draft dissertation’s entry in the UNM

libraries’ catalog information system. According to the amended complaint, he diligently

checked this information system “[a]t regular weekly (and often even daily) intervals.”

(R. Vol. I at 84.) As his prior searches failed to discover any reference to his dissertation,

they confirmed the work was not “distributed,” in the parlance of § 106(3), until June 16,

2009. Further, given Diversey’s continued efforts to work with UNM officials to both

prevent his dissertation from being distributed and to rectify the lack of attention given to

it by the faculty, he had a legitimate reason to believe UNM might indeed change course

and elect not to distribute the dissertation in its libraries.

In the appellees’ view, Diversey had actual notice of the alleged infringement of

his distribution right when he was informed his dissertation “‘had been deposited in

Zimmerman Library’ on February 7, 2008.” (Appellee Br. 8.) This assertion elides the

distinction between the deposit in the library and the library’s subsequent distribution of

the work. Given Diversey’s objections and the routine processing time necessary for the

libraries to add the dissertation to their collections, the deposit of the dissertation in the

library was not tantamount to the distribution of the work. The essence of distribution in

the library lending context is the work’s availability “to the borrowing or browsing

public.” See Hotaling, 118 F.3d at 203. Until the work was available in the catalog

system, Diversey had no reason to believe it was available to the borrowing or browsing

public.

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 Diversey’s claim of infringement of his right to distribution accrued on June 16,

2009, and his June 15, 2012, complaint was timely as to this claim. The judge’s contrary

conclusion was an error.8

C. Fair Use

As an alternative basis for affirmance, the appellees contend their use was

permissible under the statutory provisions for fair use. See 17 U.S.C. § 107. Under the

facts as alleged in the amended complaint, the fair-use analysis favors Diversey.

The Copyright Act of 1976 recognizes the common-law defense of fair use. 17

U.S.C. § 107; Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 549

(1985). The fair-use defense insulates from liability certain violations of a copyright

owner’s exclusive rights “for purposes such as criticism, comment, news reporting,

teaching . . ., scholarship, or research.” 17 U.S.C. § 107. It establishes the four primary

(but non-exclusive) factors to determine whether a particular use is fair:

(1) the purpose and character of the use, including whether
such use is of a commercial nature or is for nonprofit
educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in
relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value
of the copyrighted work.

8
Our resolution of this issue in Diversey’s favor makes the resolution of his
arguments about the judge having made “false inferences and factual misrepresentations”
unnecessary. (Appellant Br. at 34.)

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Id. As amended, § 107 tells us the unpublished nature of a work does “not itself bar a

finding of fair use if such finding is made upon consideration of all the above factors.”

Id.

Here, only the first factor—purpose and character of use—weighs strongly in the

appellees’ favor. The use at issue is the distribution of the dissertation via the UNM

libraries. This is a non-commercial, educational purpose at the heart of the protection for

fair use. The libraries themselves, while they apparently serve the public, are academic

libraries existing primarily for scholarly and research purposes.

The second factor—the nature of the copyrighted work—weighs strongly in

Diversey’s favor. As he notes, “[u]nder ordinary circumstances, the author’s right to

control the first public appearance of his undisseminated expression will outweigh a

claim of fair use.” (Appellant Br. at 28 (quoting Harper & Row, 471 U.S. at 555).); see

Harper & Row, 471 U.S. at 553 (noting the copyright owner’s heightened interest in the

right of first publication relative to the other exclusive rights provided under 17 U.S.C. §

106).) Indeed, at common law, the defense of fair use could never be applied to alleged

infringements of unpublished works. Harper & Row, 471 U.S. at 550-51; Salinger v.

Random House, Inc., 811 F.2d 90, 95 (2d Cir. 1987). Although this restriction has

subsequently softened, see Salinger, 811 F.2d at 95, the unpublished nature of Diversey’s

dissertation weighs heavily against the appellees under the second fair-use factor. See 17

U.S.C. § 107(2); Salinger, 811 F.2d at 96-97.

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 The third factor—the amount and substantiality of the portion used in relation to

the whole—also weighs strongly in Diversey’s favor because the UNM libraries are

distributing the entire dissertation.

The fourth factor—the effect of the use on the potential market for or value of the

copyrighted work—is somewhat harder to assess. Diversey does not allege his work was

intended for the commercial market. Rather, the value of the work is in the opportunities

it affords him to properly complete his doctoral program, compete for academic jobs, and

advance the scholarship in his discipline. At this stage, we accept as true his assertion

that he cannot effectively complete the dissertation review and defense process at another

institution while UNM still lists his work in its libraries’ catalogs. This has completely

deprived him of the value of the dissertation. This factor weighs in his favor.

Because, at this stage, the fair-use factors tilt heavily against the appellees, their

use cannot be considered fair under 17 U.S.C. § 107.

D. Involvement of Each of the Appellees

As another alternative basis for affirmance, the appellees contend Diversey’s

amended complaint fails to allege any of them personally “undertook any act to cause the

dissertation to be cataloged.” (Appellee Br. 13.) We leave this issue for the district court

to resolve on remand.

Ordinarily, there are two elements to a claim for liability for copyright

infringement. A plaintiff must show (1) he owns a valid copyright to the allegedly

infringed work, and (2) the defendant violated one of his exclusive rights as copyright

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owner. Country Kids ‘N City Slicks, Inc. v. Sheen, 77 F.3d 1280, 1284 & n.2 (10th Cir.

1996); see 17 U.S.C. §§ 106, 501(a). However, a defendant can also be secondarily

liable for another’s copyright infringement under principles of vicarious and contributory

liability. See Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259, 261-65 (9th Cir. 1996).

Vicarious liability attaches when the defendant “has the right and ability to supervise the

infringing activity” and “has a direct financial interest in such activities.” Gershwin

Publ’g Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971). A

defendant may be vicariously liable even when he or she is not aware of the infringing

activity. Fonovisa, 76 F.3d at 262. By contrast, contributory liability attaches when the

defendant causes or materially contributes to another’s infringing activities and knows of

the infringement. Id. at 264. One way of establishing contributory liability is by showing

a defendant “authorized the infringing use.” Softel, Inc. v. Dragon Med. & Scientific

Comms., Inc., 118 F.3d 955, 971 (2d Cir. 1997) (quoting Sony Corp. of Am. v. Universal

City Studios, Inc., 464 U.S. 417, 437 (1984)).

Here, there appears to be no dispute as to the validity of Diversey’s copyright.

And, in light of the above discussion, Diversey’s exclusive right to control the

distribution of his dissertation was infringed. The appellees ask us to determine whether

the amended complaint adequately alleges sufficient involvement to expose each of them

to liability. In the appellees’ view, the complaint fails to allege any of them personally

listed the dissertation in the libraries’ catalog system or asked anyone else to do so.

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 On the contrary, this is exactly what the complaint alleges with respect to

Fleddermann. It alleges he confiscated the draft dissertation from Weintraub’s office and

provided it to the UNM libraries for inclusion in their collections. As this resulted in the

libraries’ distribution of the dissertation, Diversey has stated a plausible claim of

contributory copyright infringement claim against Fleddermann.

We are, however, reluctant to extend our analysis beyond Fleddermann.9 The

judge did not address the arguments with respect to any of the other appellees in his

memorandum opinion. Because Diversey’s claims include allegations of secondary

liability, a fact-intensive analysis will be necessary to determine whether he has stated a

plausible claim against each appellee. We decline to decide this issue in the first

instance. See Lowe v. Town of Fairland, Okla., 143 F.3d 1378, 1381 (10th Cir. 1998)

(“As a general rule an appellate court does not consider an issue not passed upon

below.”).

CONCLUSION

With respect to Diversey’s claims of infringement of his exclusive right to copy

his dissertation, we AFFIRM the judgment of the district court. With respect to his claim

9
Diversey named as defendants three members and officers of UNM’s Board of
Regents (James Koch, Raymond Sanchez, and Jack Fortner) with whom he
communicated during his efforts to resolve his concerns. He also named three
administrators he contacted: Martha Bedard, UNM’s Dean of University Libraries,
David Schmidly, UNM’s former president, and former Deputy Provost Richard Holder.
In addition to his other contacts with the appellees, Diversey sent each of the appellees a
letter demanding they cease UNM’s infringement of his copyright.

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of infringement of his exclusive right of distribution, we REVERSE and REMAND for

further proceedings consistent with this opinion.

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