UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
ICC EVALUATION SERVICE, LLC,
Plaintiff,
and
INTERNATIONAL CODE COUNCIL, INC.,
Civil Action No. 16-54
Plaintiff-Intervenor, (EGS)(DAR)
v.
INTERNATIONAL ASSOCIATION OF
PLUMBING AND MECHANICAL
OFFICIALS, INC., et al.,
Defendants.
MEMORANDUM OPINION
I. Introduction
This copyright infringement action involves four entities
in the national market for building product evaluation services.
Pursuant to the Copyright Act of 1976, 17 U.S.C. §§ 101 et seq.,
Plaintiff ICC Evaluation Service, LLC (“ES”) and Plaintiff-
Intervenor International Code Council, Inc. (“ICC,” together
with ES, the “ICC Entities”) bring this lawsuit against the
defendants, the International Association of Plumbing and
Mechanical Officials, Inc. (“IAPMO”) and IAPMO Evaluation
Service, LLC (“IAPMO-ES,” together with IAPMO, the “IAPMO
Entities”). The ICC Entities assert ownership of copyrights to
certain publications and technical guidelines that assess
whether building products comply with building codes and
regulations. The ICC Entities allege that the IAPMO Entities
violated the ICC Entities’ copyrights by producing,
distributing, and placing in the market products that are copies
or derivatives of the copyrighted works without permission or a
license. See Pl.’s Third Am. Compl. (“TAC”), ECF No. 70 at 33 ¶¶
162-64; see also Pl.-Intervenor’s First Am. Compl. (“FAC”), ECF
No. 138 at 27-28 ¶¶ 124-25. 1
Pending before the Court are the IAPMO Entities’ objections
to Magistrate Judge Deborah A. Robinson’s Report and
Recommendation (“R & R”), which recommends denying the IAPMO
Entities’ motions to dismiss Plaintiff’s Third Amended Complaint
and Plaintiff-Intervenor’s First Amended Complaint under Federal
Rules of Civil Procedure 12(b)(1) and 12(b)(6). R & R, ECF No.
174 at 21. Raising no objections to the R & R, the ICC Entities
urge this Court to adopt the R & R in its entirety. Upon careful
consideration of Magistrate Judge Robinson’s R & R, the parties’
submissions, the relevant law, and the entire record herein, the
Court ADOPTS Magistrate Judge Robinson’s R & R, and DENIES the
IAPMO Entities’ motions to dismiss.
1 When citing electronic filings throughout this Opinion, the
Court cites to the ECF page number, not the page number of the
filed document.
2
II. Background
The Court assumes the parties’ familiarity with the factual
background and procedural history in this case. The Court will
provide an abbreviated overview of the relevant statutory scheme
and then briefly summarize the relevant background to resolve
the pending motions.
A. The Copyright Act
Under the Copyright Act, “[c]opyright in a work . . . vests
initially in the author or authors of the work.” 17 U.S.C.
§ 201(a). “As a general rule, the author is the party who
actually creates the work, that is, the person who translates an
idea into a fixed, tangible expression entitled to copyright
protection.” Cmty. for Creative Non-Violence v. Reid, 490 U.S.
730, 737 (1989) (citing 17 U.S.C. § 102). The Act provides a
“works made for hire” exception to this rule. Id. An employer
becomes the author rather than the person who actually creates
the work under certain circumstances, such as if “a work [is]
prepared by an employee within the scope of his or her
employment,” unless there is a written agreement to the
contrary. 17 U.S.C. § 101 (defining “work made for hire”); see
also id. § 201(b).
The copyright owner has certain “exclusive rights” to
reproduce, distribute, or display the copyrighted works in
addition to the right to prepare derivative works based on those
3
works. Id. § 106. “The ownership of a copyright may be
transferred in whole or in part by any means of conveyance or by
operation of law.” Id. § 201(d)(1); see also id. § 204(a)
(copyright owner may transfer its rights through “an instrument
of conveyance, or a note or memorandum of the transfer.”).
“Section 204(a)—frequently referred to as the Copyright Act’s
‘statute of frauds’—specifically contemplates a post-hoc ‘note
or memorandum of the transfer,’ as distinct from an ‘instrument
of conveyance,’ as a permissible means of satisfying the Act’s
writing requirement.” Barefoot Architect, Inc. v. Bunge, 632
F.3d 822, 827 (3d Cir. 2011). “Under the statute’s plain terms
it is clear that an oral transfer can be given legal effect by a
subsequent signed writing.” Id.
A violation of a copyright owner’s exclusive rights
constitutes copyright infringement. 17 U.S.C. § 501. “The legal
or beneficial owner of an exclusive right under a copyright is
entitled, subject to the requirements of section 411, to
institute an action for any infringement of that particular
right committed while he or she is the owner of it.” Id.
§ 501(b); see also id. § 411(a) (“[N]o civil action for
infringement of the copyright in any United States work shall be
instituted until preregistration or registration of the
copyright claim has been made in accordance with this title.”).
Finally, a plaintiff must prove two elements to establish
4
copyright infringement: “(1) ownership of a valid copyright, and
(2) copying of constituent elements of the work that are
original.” Stenograph, LLC v. Bossard Assocs., Inc., 144 F.3d
96, 99 (D.C. Cir. 1998) (quoting Feist Publ’ns, Inc. v. Rural
Tel. Serv. Co., 499 U.S. 340, 361 (1991)).
B. Factual and Procedural Background
Between 1977 and 2003, ICC’s predecessors—at least eight
regional code organizations and their affiliates (collectively,
the “Legacy Organizations”)—authored “technical Evaluation
Reports” and created “original Acceptance Criteria.” TAC, ECF
No. 70 at 3 ¶ 9. 2 The two sets of publications—the Evaluation
Reports and the Acceptance Criteria (collectively, the “Legacy
Works”)—were originally owned by the Legacy Organizations. Id.
at 3 ¶ 9, 6 ¶ 28. As to the first type, the Evaluation Reports
assess “components, methods, and materials for compliance with
building codes and regulations.” Id. at 4 ¶ 10. And the
Evaluation Reports rely on third-party data. Id. at 2 ¶ 2. The
2 The facts—drawn from Plaintiff’s Third Amended Complaint,
Plaintiff-Intervenor’s First Amended Complaint, the documents
attached and incorporated by reference therein—are assumed to be
true and construed liberally in the ICC Entities’ favor for
purposes of deciding the motions to dismiss. See Klay v.
Panetta, 758 F.3d 369, 371 (D.C. Cir. 2014). As noted by
Magistrate Judge Robinson, Plaintiff’s Third Amended Complaint
and Plaintiff-Intervenor’s First Amended Complaint contain the
same allegations related to the Legacy Works. R & R, ECF No. 174
at 2 n.1. For the sake of convenience, Magistrate Judge Robinson
cited to the Third Amended Complaint in the “Background” section
of the R & R, and this Court will follow suit.
5
Acceptance Criteria, the second type, are technical guidelines
“use[d] as the basis for issuance of future Evaluation Reports.”
Id. at 4 ¶ 10. The Legacy Organizations published the Legacy
Works on a monthly basis in “Serial Publications,” which were
registered with the United States Copyright Office. Id. at 8 ¶
37.
In 2003, the Legacy Organizations merged to form ICC. Id.
at 3 ¶ 8. 3 On or about January 31, 2003, the Legacy Organizations
“donated, granted, transferred, assigned, and conveyed to ICC
all of their right, title and interest in and to, inter alia,
proprietary information including ‘original works of authorship,
copyrights, trademarks, trade names, logos, trade secrets,
patents or other intellectual property rights,’ and including
the [Legacy Works at issue].” Id. at 7 ¶ 34 (quoting Pl.’s
Sealed Ex. 1, ECF No. 71-1 at 3). ICC, in turn, assigned its
ownership in the copyrighted Legacy Works to an organization
that became ES. Id. at 8 ¶¶ 35-36, 9 ¶¶ 41-42, 10 ¶¶ 43-47, 11
¶¶ 48-51, 12 ¶¶ 52-54.
3 The Legacy Organizations included the following entities:
(1) International Conference of Building Officials, Inc.
(“ICBO”); (2) ICBO Evaluation Service, Inc. (“ICBO-ES”);
(3) International Evaluation Service, Inc. (“IES”); (4) Southern
Building Code Congress International (“SBCCI”); (5) SBCCI Public
Service Testing and Evaluation Services, Inc. (“SBCCI PST &
ESI”); (6) Building Officials and Code Administrators
International (“BOCA”); (7) BOCA Evaluation Services (“BOCA-
ES”); and (8) National Evaluation Services, Inc. (“NES”). TAC,
ECF No. 70 at 3 ¶ 8.
6
ES, a subsidiary of ICC, prepares the Evaluation Reports
and develops the Acceptance Criteria. Id. at 2 ¶¶ 1-2. ES hires
“highly experienced professionals,” such as architects and
engineers, to provide the findings and recommendations in the
technical evaluations. Id. at 2 ¶ 1. ES provides those reports,
free of charge, on its website. Id. And ES makes the Acceptance
Criteria available for purchase on its website. Id. at 2 ¶ 2.
Competing in the same market, “IAPMO-ES creates evaluation
criteria, evaluates building products, and publishes evaluation
reports.” Id. at 4 ¶ 14. And “IAPMO [, the parent company of
IAPMO-ES,] develops model building codes, including the Uniform
Plumbing Code and Uniform Mechanical Code.” Id. at 4 ¶ 12.
On January 13, 2016, ES brought this action against the
IAPMO Entities, asserting copyright infringement and state-law
claims for breach of contract, tortious interference with
contract, and tortious interference with prospective business
relationships. See generally Compl., ECF No. 1. ES then filed
the First Amended Complaint, alleging that the IAPMO Entities
infringed thirteen Evaluation Reports and four Acceptance
Criteria (the “non-Legacy Works”). First Am. Compl., ECF No. 13
at 5-6 ¶ 25. On September 19, 2016, this Court granted in part
and denied in part the IAPMO Entities’ motion to dismiss the
First Amended Complaint. ICC Evaluation Serv., LLC v. Int’l
Ass’n of Plumbing & Mech. Officials, No. 16-cv-54, 2016 U.S.
7
Dist. LEXIS 153518, *12-*27 (D.D.C. Sept. 19, 2016) (dismissing
state-law claims). The copyright infringement claim survived the
IAPMO Entities’ motion to dismiss. Id. at *5-*12.
ES then filed a Second Amended Complaint, asserting new
allegations related to the Legacy Works. See Pl.’s Second Am.
Compl., ECF No. 62 at 8-9 ¶ 33. In response to the IAPMO
Entities’ partial motion to dismiss the Second Amended Complaint
and request for a more definite statement with respect to the
alleged ownership of the copyrighted Legacy Works, ES filed the
Third Amended Complaint—the operative complaint—on April 13,
2018. See generally TAC, ECF No. 70. On the same day, ICC moved
to intervene in this action to “protect any rights in and to
copyrights or copyright registrations it may own in this
litigation” in the event that ICC’s assignment of the Legacy
Works to ES was invalid. Pl.-Intervenor’s Mot. to Intervene, ECF
No. 73 at 2. Magistrate Judge Robinson, having been referred
this case for full case management, granted ICC’s motion. Order,
ECF No. 117 at 1; see also Min. Order of July 17, 2017. ICC
filed an intervenor complaint against the IAPMO Entities on May
24, 2019, see generally Pl.-Intervenor’s Compl., ECF No. 122,
and then filed an amended intervenor complaint on July 1, 2019,
see generally Pl.-Intervenor’s FAC, ECF No. 138.
ES claims ownership of the copyrighted Legacy Works and
non-Legacy Works. TAC, ECF No. 70 at 16 ¶ 64. ES asserts one
8
count of copyright infringement against the IAPMO Entities, id.
at 33 ¶¶ 162-67, seeking “to enjoin [the IAPMO Entities’]
widespread unlawful behavior and to recover ES’s damages
attributable to Defendants’ copyright infringement relating to
[the works at issue],” id. at 2 ¶ 3. The operative complaint
provides a list of eight copyrighted Legacy Works, id. at 15 ¶
62; and nineteen copyrighted non-Legacy Works, id. at 13-14 ¶
59. ICC seeks, inter alia, a declaratory judgment that ES owns
the copyrighted Legacy Works. Pl.-Intervenor’s FAC, ECF No. 138
at 28-29. Alternatively, ICC seeks the same relief as ES if the
Court determines ES lacks ownership in the copyrighted Legacy
Works. Id. at 29-30.
On April 27, 2018, the IAPMO Entities moved to dismiss the
Third Amended Complaint as to the eight Legacy Works. See Defs.’
Partial Mot. to Dismiss, ECF No. 77 at 1-2. The IAPMO Entities
moved to dismiss ICC’s First Amended Complaint on July 15, 2019.
See Defs.’ Mot. to Dismiss, ECF No. 145 at 1. On November 22,
2019, Magistrate Judge Robinson issued the R & R. See generally
R & R, ECF No. 174. The IAPMO Entities submitted objections to
the R & R. See generally Defs.’ Objs., ECF No. 176. The ICC
Entities filed a response. See generally Pls.’ Resp., ECF No.
178. The IAPMO Entities then filed a reply brief. See Defs.’
9
Reply, ECF No. 179. 4 The objections are ripe and ready for the
Court’s adjudication.
III. Legal Standard
A. Objections to a Magistrate Judge’s R & R
Pursuant to Federal Rule of Civil Procedure 72(b), a party
may file specific written objections once a magistrate judge has
entered a recommended disposition. Fed. R. Civ. P. 72(b)(1)-(2).
A district court “may accept, reject or modify the recommended
disposition.” Fed. R. Civ. P. 72(b)(3); see also 28 U.S.C.
§ 636(b)(1). The district court “must determine de novo any part
of the magistrate judge’s disposition that has been properly
objected to.” Fed. R. Civ. P. 72(b)(3). “If, however, the party
makes only conclusory or general objections, or simply
reiterates his original arguments, the Court reviews the [R & R]
only for clear error.” Houlahan v. Brown, 979 F. Supp. 2d 86, 88
(D.D.C. 2013) (citation omitted).
Proper objections “shall specifically identify the portions
of the proposed findings and recommendations to which objection
is made and the basis for the objection.” LCvR 72.3(b).
“[O]bjections which merely rehash an argument presented and
considered by the magistrate judge are not ‘properly objected
4 The IAPMO Entities requested an oral hearing. See Defs.’ Objs.,
ECF No. 176 at 1. The Court will not exercise its discretion to
hold a hearing. See LCvR 7(f). Accordingly, the Court DENIES the
IAPMO Entities’ request for an oral hearing.
10
to’ and are therefore not entitled to de novo review.” Shurtleff
v. EPA, 991 F. Supp. 2d 1, 8 (D.D.C. 2013) (citation omitted). A
court need not consider cursory objections made only in a
footnote. Hutchins v. District of Columbia, 188 F.3d 531, 539
n.3 (D.C. Cir. 1999); see also Potter v. District of Columbia,
558 F.3d 542, 553 (D.C. Cir. 2009) (Williams, J., concurring)
(“[J]udges are not like pigs, hunting for truffles buried in
briefs or the record.”) (citation and internal quotation marks
omitted).
B. Motion to Dismiss for Lack of Subject-Matter
Jurisdiction
To survive a motion to dismiss under Federal Rule of Civil
Procedure 12(b)(1), “the plaintiff bears the burden of
establishing jurisdiction by a preponderance of the
evidence.” Moran v. U.S. Capitol Police Bd., 820 F. Supp. 2d 48,
53 (D.D.C. 2011) (citing Lujan v. Defs. of Wildlife, 504 U.S.
555, 561 (1992)). “Because Rule 12(b)(1) concerns a court’s
ability to hear a particular claim, the court must scrutinize
the plaintiff’s allegations more closely when considering a
motion to dismiss pursuant to Rule 12(b)(1) than it would under
a motion to dismiss pursuant to Rule 12(b)(6).” Schmidt v. U.S.
Capitol Police Bd., 826 F. Supp. 2d 59, 65 (D.D.C. 2011). In so
doing, the court must accept as true all of the factual
allegations in the complaint and draw all reasonable inferences
11
in favor of the plaintiff, but the court need not “accept
inferences unsupported by the facts or legal conclusions that
are cast as factual allegations.” Rann v. Chao, 154 F. Supp. 2d
61, 63 (D.D.C. 2001). Finally, “[t]he court may consider such
materials outside the pleadings as it deems appropriate to
resolve the question whether it has jurisdiction to hear the
case.” Scolaro v. D.C. Bd. of Elections & Ethics, 104 F. Supp.
2d 18, 22 (D.D.C. 2000).
C. Motion to Dismiss for Failure to State a Claim Upon
Which Relief Can Be Granted
“A Rule 12(b)(6) motion to dismiss tests the legal
sufficiency of a plaintiff’s complaint.” Herron v. Fannie Mae,
861 F.3d 160, 173 (D.C. Cir. 2017). “[T]he complaint is
construed liberally in the plaintiff[’s] favor, and [courts]
grant [the] plaintiff[] the benefit of all inferences that can
be derived from the facts alleged.” Kowal v. MCI Comm’cns Corp.,
16 F.3d 1271, 1276 (D.C. Cir. 1994). However, the court is “not
bound to accept as true a legal conclusion couched as a factual
allegation.” Papasan v. Allain, 478 U.S. 265, 286 (1986).
A complaint survives a motion under Rule 12(b)(6) only if
it “contain[s] 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 omitted).
A claim is facially plausible “when the plaintiff pleads factual
12
content that allows the court to draw [a] reasonable inference
that the defendant is liable for the misconduct alleged.” Id.
(quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 556 (2007)).
A complaint alleging facts which are “merely consistent with a
defendant’s liability . . . stops short of the line between
possibility and plausibility of entitlement to relief.” Id.
(citing Twombly, 550 U.S. at 557) (internal quotation marks
omitted).
IV. Analysis
The main dispute at this stage of the litigation involves
two issues: (1) whether the ICC Entities sufficiently allege
that they own the copyrighted Legacy Works; and (2) whether
those individual works were registered as part of the Serial
Publications with the U.S. Copyright Office. See Defs.’ Mem. of
P. & A. in Supp. of Defs.’ Partial Mot. to Dismiss (“Defs.’
Partial Mem.”), ECF No. 77-1 at 5-6; see also Pl.’s Opp’n, ECF
No. 83 at 5. The IAPMO Entities move to dismiss for lack of
subject-matter jurisdiction under Rule 12(b)(1), arguing that
the ICC Entities lack standing because the ICC Entities fail to
establish ownership of the copyrighted Legacy Works. See Defs.’
Partial Mem., ECF No. 77-1 at 8; see also Defs.’ Mem. in Supp.
of Defs.’ Mot. to Dismiss (“Defs.’ Mem.”), ECF No. 145-1 at 8.
The IAPMO Entities separately move to dismiss for failure to
state a claim under Rule 12(b)(6), contending that the ICC
13
Entities fail to sufficiently allege: (1) ownership of the
individual Legacy Works; (2) registration of the individual
Legacy Works within the Serial Publications; and (3) the
individual Legacy Works are “works made for hire.” See Defs.’
Partial Mem., ECF No. 77-1 at 15-20; see also Defs.’ Mem., ECF
No. 145-1 at 18-19. The Court first addresses the standing
issue, and then turns to the merits.
A. Standing
The IAPMO Entities’ motions are predicated on the argument
that the ICC Entities lack standing to sue under the Copyright
Act because neither ES nor ICC own the copyrights in the Legacy
Works. See Defs.’ Partial Mem., ECF No. 77-1 at 8-14; see also
Defs.’ Mem., ECF No. 145-1 at 8-18. The IAPMO Entities do not
challenge the ICC Entities’ Article III standing. See R & R, ECF
No. 174 at 7; see also Defs.’ Partial Mem., ECF No. 77-1 at 8.
Nonetheless, this Court must assure itself that constitutional
standing exists in this case before proceeding to the merits.
Summers v. Earth Island Inst., 555 U.S. 488, 499 (2009) (“[I]t
is well established that the court has an independent obligation
to assure that standing exists, regardless of whether it is
challenged by any of the parties.”).
In their objections to the R & R, the IAPMO Entities
concede that they did not address a single element of Article
III standing in their motions. Defs.’ Objs., ECF No. 176 at 12.
14
But the IAPMO Entities contend that their standing arguments as
to the ICC Entities’ alleged ownership of the copyrighted Legacy
Works “implicitly challenge [the ICC Entities’] constitutional
standing.” Id. (emphasis added). And the IAPMO Entities argue
that they “are expressly challenging [the ICC Entities’]
statutory standing under the Copyright Act” by arguing that the
ICC Entities fail to establish ownership of the copyrighted
Legacy Works. Id. (emphasis added).
Article III standing is separate and distinct from
“statutory standing.” Steel Co. v. Citizens for a Better Env’t,
523 U.S. 83, 97 (1998) (explaining that statutory standing “has
nothing to do with whether there is a case or controversy under
Article III”). “Article III of the Constitution limits the
jurisdiction of the federal courts to ‘Cases’ and
‘Controversies.’” Susan B. Anthony List v. Driehaus, 573 U.S.
149, 157 (2014) (quoting U.S. Const. art. III, § 2). “‘One
element of the case-or-controversy requirement’ is that
plaintiffs ‘must establish that they have standing to sue.’”
Clapper v. Amnesty Int’l USA, 133 S. Ct. 1138, 1146 (2013)
(quoting Raines v. Byrd, 521 U.S. 811, 818 (1997)). To establish
standing, “a plaintiff must show (1) an ‘injury in fact,’ (2) a
sufficient ‘causal connection between the injury and the conduct
complained of,’ and (3) a ‘likel[ihood]’ that the injury ‘will
be redressed by a favorable decision.’” Susan B. Anthony List,
15
573 U.S. at 157-58 (quoting Lujan, 504 U.S. at 560-61). A
plaintiff bears the burden of demonstrating constitutional
standing. Steel Co., 523 U.S. at 104.
Statutory standing concerns the question of “whether a
legislatively conferred cause of action encompasses a particular
plaintiff’s claim.” Lexmark Int’l, Inc. v. Static Control
Components, Inc., 572 U.S. 118, 127 (2014). The Supreme Court
has explained that statutory standing is “misleading, since ‘the
absence of a valid (as opposed to arguable) cause of action does
not implicate subject-matter jurisdiction, i.e., the court’s
statutory or constitutional power to adjudicate the case.’” Id.
at 128 n.4 (quoting Verizon Md. Inc. v. Public Serv. Comm’n of
Md., 535 U.S. 635, 642–643 (2002)). Thus, “the issue is whether
[the plaintiff] has a statutory right to sue for infringement
under the Copyright Act, which is properly addressed in a motion
under Rule 12(b)(6), not whether [the plaintiff] has satisfied
the requirements of Article III, which is properly addressed in
a motion under Rule 12(b)(1).” Minden Pictures, Inc. v. John
Wiley & Sons, Inc., 795 F.3d 997, 1001 (9th Cir. 2015).
With these principles in mind, the Court turns to the IAPMO
Entities’ three arguments for dismissal on standing grounds:
(1) the ICC Entities fail to establish that ES owns the
copyrighted Legacy Works; (2) the ICC Entities do not establish
that the copyrights were transferred to ES; and (3) the ICC
16
Entities do not sufficiently allege that the Legacy Works were
“made for hire” on behalf of one of the Legacy Organizations
that transferred the copyrights to the ICC Entities. See Defs.’
Mem., ECF No. 145-1 at 8-18; see also Defs.’ Partial Mem., ECF
No. 77-1 at 8-14.
Magistrate Judge Robinson determined that the three issues
raised by the IAPMO Entities—“[1] [w]hether [ES] owns the Legacy
Works, [2] whether the alleged transfers of copyright ownership
took place, and [3] whether the underlying works were ‘made for
hire’”—are “merits questions.” R & R, ECF No. 174 at 7.
Magistrate Judge Robinson found that “[t]he bulk of the
challenges in both motions [to dismiss] are not jurisdictional,
but instead go to the merits of [the ICC Entities’] claims.” Id.
at 6. As such, Magistrate Judge Robinson concluded that
dismissal under Rule 12(b)(1) is improper where, as here,
“arguments for dismissal are ‘intertwined with facts central to
the merits of the dispute.’” Id. at 7 (quoting Star Sci., Inc.
v. R.J. Reynolds Tobacco Co., 174 F. Supp. 2d 388, 394 (D. Md.
2001)).
Having found that the IAPMO Entities raised “three issues
that could conceivably relate to subject matter jurisdiction,”
id. at 7, Magistrate Judge Robinson rejected all of them, id. at
7-9. First, Magistrate Judge Robinson rejected the IAPMO
Entities’ argument that “[the ICC Entities] do not have a
17
claim,” which would arguably deprive the Court of subject-matter
jurisdiction. Id. at 7. Magistrate Judge Robinson explained that
the IAPMO Entities’ argument “is not a proper basis upon which
to grant a [Rule] 12(b)(1) motion” because “[a]nswering [the
IAPMO Entities’ standing arguments] will determine whether
Plaintiffs have stated a proper claim under the Copyright Act
but do not implicate this court’s ability to hear the merits of
the dispute.” Id. Next, Magistrate Judge Robinson found that
there was “no jurisdictional problem with ICC seeking
declaratory relief as a remedy” given that ICC seeks declaratory
relief rather than asserting a count for declaratory judgment.
Id. at 8.
Finally, Magistrate Judge Robinson rejected the IAPMO
Entities’ argument—that ICC fails to meet the jurisdictional
requirement under Section 411 of the Copyright Act requiring the
registration of copyrights before filing a suit, Defs.’ Mem.,
ECF No. 145-1 at 17 (citing 17 U.S.C. § 411)—because the Supreme
Court has made clear that the “registration requirement is a
precondition to filing a claim that does not restrict a federal
court’s subject-matter jurisdiction.” R & R, ECF No. 174 at 8-9
(quoting Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154, 161
(2010)).
The IAPMO Entities object to the R & R’s conclusions that:
(1) the IAPMO Entities’ fail to identify any elements of Article
18
III standing that the ICC Entities failed to satisfy; and
(2) the IAPMO Entities’ jurisdictional issues are “merits
questions.” Defs.’ Objs., ECF No. 176 at 9-12. The Court
addresses each objection in turn. 5
1. Constitutional Standing
It is undisputed that the IAPMO Entities’ motions do not
address the three elements of Article III standing: (1) injury-
in-fact, (2) causation, and (3) redressability. See R & R, ECF
No. 174 at 7 (citing Spokeo, Inc. v. Robins, 136 S. Ct. 1540,
1547-48 (2016)); see also Defs.’ Partial Mem., ECF No. 77-1 at
8-14. The IAPMO Entities concede that their “motions did not
frame the argument in terms of ‘harm’ or ‘injury.’” Defs.’
Objs., ECF No. 176 at 12.
In “considering whether a plaintiff has Article III
standing, a federal court must assume arguendo the merits of his
or her legal claim.” Parker v. District of Columbia, 478 F.3d
370, 377 (D.C. Cir. 2007), aff’d sub nom. District of Columbia
v. Heller, 554 U.S. 570 (2008); see also Schnitzler v. United
States, 761 F.3d 33, 40 (D.C. Cir. 2014) (“[I]n reviewing the
5 The IAPMO Entities do not object to Magistrate Judge Robinson’s
findings that there are no jurisdictional issues with respect
to: (1) ICC’s request for declaratory relief; and (2) ICC’s
alleged failure to register the Legacy Works under Section 411
of the Copyright Act. See R & R, ECF No. 174 at 7-8; see also
Defs.’ Objs., ECF No. 176 at 8-23. Having found no clear error,
this Court ADOPTS those findings in the R & R. See Houlahan, 979
F. Supp. 2d at 88.
19
standing question, the court must . . . assume that on the
merits the plaintiffs would be successful in their claims.”
(citation and internal quotation marks omitted)). Here, the
Court must assume arguendo that the ICC Entities’ copyright
infringement claims have merit, and that the IAPMO Entities
infringed on the ICC Entities’ copyrighted Legacy Works. The ICC
Entities allege that they have suffered damages and will
continue to suffer damages as a result of the IAPMO Entities’
alleged infringement. See, e.g., Pls.’ Resp., ECF No. 178 at 9-
10; TAC, ECF No. 70 at 2 ¶ 3; Pl.-Intervenor’s FAC, ECF No. 138
at 8 ¶ 31.
The IAPMO Entities do not dispute that the ICC Entities
meet the causation and redressability prongs, see Defs.’ Objs.,
ECF No. 176 at 12; and it is clear that the ICC Entities satisfy
those requirements. Plaintiff’s Third Amended Complaint and
Plaintiff-Intervenor’s First Amended Complaint allege that ES
owns the copyrighted Legacy Works, the IAPMO Entities’
infringement of those copyrighted works have caused the ICC
Entities to suffer damages, and an injunction restraining such
wrongful conduct would redress that injury. See, e.g., TAC, ECF
No. 70 at 33 ¶¶ 162-67, 34-37; Pl.-Intervenor’s FAC, ECF No. 138
at 8 ¶ 31.
In their objections to the R & R, the IAPMO Entities only
challenge the “injury” prong, arguing that the ICC Entities
20
“could not have suffered any harm as a result of the alleged
infringement” without ownership of the copyrighted Legacy Works.
Defs.’ Objs., ECF No. 176 at 12. In opposition, the ICC Entities
contend that Plaintiff’s Third Amended Complaint and Plaintiff-
Intervenor’s First Amended Complaint “adequately plead injury
through their claim of infringement.” Pls.’ Resp., ECF No. 178
at 9-10.
a. Injury-in-Fact
The ICC Entities easily satisfy Article III standing’s
injury-in-fact requirement. A plaintiff must demonstrate “injury
in fact,” which is (a) concrete and particularized and
(b) actual or imminent. Lujan, 504 U.S. at 560-61. Here,
Plaintiff’s Third Amended Complaint and Plaintiff-Intervenor’s
First Amended Complaint assert that ES is the owner of the
copyrighted Legacy Works. See TAC, ECF No. 70 at 16 ¶ 64; see
also Pl.-Intervenor’s FAC, ECF No. 138 at 15 ¶ 68; cf. Roe v.
Bernabei & Wachtel PLLC, 85 F. Supp. 3d 89, 99 (D.D.C. 2015)
(“[A] party alleging copyright infringement need only claim
ownership over the copyrighted work.”). The ICC Entities allege
that they have suffered and continue to suffer concrete and
particularized harms as a result of the infringing conduct by
the IAPMO Entities. See TAC, ECF No. 70 at 17 ¶ 73 (alleging
“Defendants have used, infringed upon, distributed and otherwise
profited from, and, unless enjoined by this Court, will in the
21
future use, infringe upon, distribute and otherwise profit from
the ES’s Copyrighted Works”); id. at 18 ¶ 81 (alleging that the
IAPMO Entities “have knowingly and willfully copied and/or
prepared derivative works using substantial portions of” the
copyrighted Legacy Works “and are or have been publishing and
distributing it on the Internet as” their own publications
without permission or license); id. at 34 (G) (seeking an award
of “actual damages and any profits attributable to Defendants’
infringement”). The Court therefore finds that the ICC Entities
have sufficiently alleged concrete harms to satisfy the injury
prong.
b. Causation and Redressability
The United States Court of Appeals for the District of
Columbia Circuit (“D.C. Circuit”) has articulated the following
test for the second and third prongs of Article III standing:
Causation, or “traceability” examines whether
it is substantially probable that the
challenged acts of the defendant, not of some
absent third party, will cause the
particularized injury of the plaintiff.
Redressability examines whether the relief
sought, assuming that the court chooses to
grant it, will likely alleviate the
particularized injury alleged by the
plaintiff.
Fla. Audubon Soc’y v. Bentsen, 94 F.3d 658, 663–64 (D.C. Cir.
1996 (citations omitted). Here, ES seeks to enjoin the IAPMO
Entities’ alleged past and continuing copyright infringement,
22
and ES alleges a causal connection between the IAPMO Entities’
actions and the alleged injury from their infringement. See TAC,
ECF No. 70 at 33 ¶¶ 164-67.
The remedy sought by the ICC Entities would alleviate the
particularized injury because: (1) ICC seeks, inter alia, a
declaration that the Legacy Organizations donated and assigned
the copyrighted Legacy Works to ICC and, in turn, ICC assigned
the copyrights to ES, see Pl.-Intervenor’s FAC, ECF No. 138 at
28-29 (A); and (2) ES seeks, inter alia, an injunction
preventing the IAPMO Entities from “marketing, offering,
selling, disposing of, licensing, leasing, transferring,
displacing, advertising, reproducing, developing, or
manufacturing any works derived or copied from” the copyrighted
Legacy Works without authorization or license, TAC, ECF No. 70
at 34 (E). The Court therefore finds that the ICC Entities
allege sufficient facts to survive the IAPMO Entities’ Rule
12(b)(1) motions to dismiss for lack of standing.
2. Merits Questions
The IAPMO Entities argue that Magistrate Judge Robinson
erred in concluding that their standing arguments related to the
ICC Entities’ alleged ownership of the copyrighted Legacy Works
“do not implicate [the] [C]ourt’s ability to hear the merits of
the dispute.” Defs.’ Objs., ECF No. 176 at 9 (quoting R & R, ECF
No. 174 at 7). The IAPMO Entities contend that the ICC Entities’
23
alleged ownership of the copyrighted Legacy Works is “central to
the foundational requirement of copyright ownership, and thus,
central to the question of standing.” Id. at 10. In response,
the ICC Entities do not dispute that “copyright ownership is a
standing issue,” but the ICC Entities contend that the IAPMO
Entities “ignore the governing law regarding when a court must
resolve standing questions that are intertwined with the
merits.” Pls.’ Resp., ECF No. 178 at 9. The Court agrees.
It is well established that “the failure to state a proper
cause of action calls for a judgment on the merits and not for a
dismissal for want of jurisdiction.” Bell v. Hood, 327 U.S. 678,
682 (1946). To support their position, the ICC Entities rely on
Herbert v. National Academy of Sciences, 974 F.2d 192 (D.C. Cir.
1992). Pls.’ Resp., ECF No. 178 at 8. In Herbert, the D.C.
Circuit instructed that “though the trial court may rule on
disputed jurisdictional facts at any time, if [those facts] are
inextricably intertwined with the merits of the case [the trial
court] should usually defer its jurisdictional decision until
the merits are heard.” 974 F.2d at 198. According to the IAPMO
Entities, this rule is inapplicable “when the court does not
resolve any disputed material facts.” Defs.’ Reply, ECF No. 179
at 3. And the IAPMO Entities contend that they “are not asking
this Court to resolve any disputed jurisdictional facts.” Id.
For the reasons explained below, the Court disagrees.
24
To establish copyright infringement, a plaintiff must
prove, inter alia, “ownership of a valid copyright.” Feist
Publ’ns, Inc., 499 U.S. at 361 (emphasis added). Under the
Copyright Act, “the certificate of a registration made before or
within five years after first publication of the work 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).
Here, ES alleges that it owns the copyrighted Legacy Works. TAC,
ECF No. 70 at 16 ¶ 64. ES attached copyright registration
certificates to the Third Amended Complaint to demonstrate its
ownership of the copyrighted Legacy Works. Pl.’s Opp’n, ECF No.
83 at 16. 6 According to the ICC Entities, the Legacy
Organizations, including ICBO, donated and assigned valid
copyrights and copyright registrations in the Legacy Works to
ICC. TAC, ECF No. 70 at 7-8 ¶¶ 34–35, 38. The ICC Entities
6 The U.S. Copyright Office issued the Certificates of
Registration attached as exhibits to the TAC. See generally
Pl.’s Exs. 12-19, ECF Nos. 70-12 through 70-19; Pl.’s Ex. 20,
ECF No. 70-20; Pl.’s Exs. 21-22, ECF Nos. 70-21 through 70-22;
Pl.’s Ex. 30, ECF No. 70-30; Pl.’s Exs. 32-38, ECF Nos. 70-32
through 70-38; Pl.’s Exs. 40-42, ECF Nos. 70-40 through 70-42;
Pl.’s Exs. 50-52, ECF Nos. 70-50 through 70-52; Pl.’s Exs. 54-
59, ECF Nos. 70-54 through 70-59; Pl.’s Exs. 64-66, ECF Nos. 70-
64 through 70-66. The Court may consider these documents and
materials outside of the pleadings “to resolve the question [of]
whether it has jurisdiction in [this] case.” DBW Partners, LLC
v. Bloomberg, L.P., No. CV 19-311 (RBW), 2019 WL 5892489, at *1
n.2 (D.D.C. Nov. 12, 2019) (quoting Rann, 154 F. Supp. 2d at
64).
25
allege that the “Restricted Donation Agreement,” which is
attached as an exhibit to the Third Amended Complaint, shows
that the Legacy Organizations transferred and assigned the
copyrighted Legacy Works to ICC. Id. at 7 ¶ 34; see also Pl.’s
Ex. 1, ECF No. 71-1 at 3. In turn, ICC donated and assigned the
copyrights and copyright registrations from the predecessor in
interest—NES—to ES on January 31, 2003. TAC, ECF No. 70 at 8 ¶
35; see also Pl.’s Ex. 2, ECF No. 70-2 at 2 (“Confirmatory
Assignment”). ES assumed all of the evaluation activities of its
predecessor. TAC, ECF No. 70 at 8 ¶¶ 36-39.
The IAPMO Entities, however, dispute whether ICBO
transferred the copyrights in the Legacy Works to ICC, and
whether ICC later transferred those copyrights to ES. Defs.’
Partial Mem., ECF No. 77-1 at 9-11. The IAPMO Entities’ first
argument—that the copyright registration certificates attached
as exhibits to the Third Amended Complaint only establish that
“certain serial publications, which allegedly include the Legacy
Works, were transferred from ICBO to ICC” and “ICC is not the
Plaintiff in this lawsuit,” id. at 8—is moot because ICC is the
Plaintiff-Intervenor, see generally Pl.-Intervenor’s FAC, ECF
No. 138 at 1. The IAPMO Entities’ next argument is that the
“Confirmatory Assignment . . . is not an assignment or transfer
agreement” because it was drafted during this litigation, Defs.’
Partial Mem., ECF No. 77-1 at 11; and “[n]owhere in Plaintiff’s
26
Third Amended Complaint does [ES] allege that the transfer of
copyrights was made pursuant to an oral agreement,” id. at 13.
The IAPMO Entities contend that “an oral agreement would have
been inconsistent with the manner in which all other aspects of
the 2003 ICC transactions were handled.” Id.
In response, the ICC Entities rely on the “relevant
transfer of ownership documents.” Pl.’s Opp’n, ECF No. 83 at 17.
The ICC Entities argue that the “Confirmatory Assignment”
constitutes a valid transfer of the copyrighted Legacy Works,
id. at 17-18; and that the IAPMO Entities fundamentally
misunderstand Section 204(a) of the Copyright Act that
“specifically contemplates a post-hoc ‘note or memorandum of the
transfer,’” which is a “permissible means of satisfying the
Act’s writing requirement,” id. at 17 (quoting Barefoot
Architect, Inc., 632 F.3d at 827). As to the oral agreement to
transfer the copyrighted Legacy Works to ICC, see TAC, ECF No.
70 at 7 ¶¶ 41-43, the ICC Entities point out that there was an
oral agreement as evidenced by an “Information Statement,” dated
August 1, 2002, that was distributed to members of the Legacy
Organizations and that discussed the upcoming Annual Meeting of
ICBO where voting members were asked to consider and vote on,
inter alia, a resolution to transfer certain assets and
operations to ICC, Pl.’s Opp’n, ECF No. 83 at 18-19 (citing
Pl.’s Ex. 3, ECF No. 70-3 at 2). The Court therefore finds that
27
there is clearly a dispute as to the ownership and transfer of
the copyrighted Legacy Works. Compare Defs.’ Partial Mem., ECF
No. 77-1 at 8-14, with Pl.’s Opp’n, ECF No. 83 at 14-20.
Next, the parties dispute whether one of the Legacy
Organizations, ICBO, owned and authored, as works-made-for-hire,
the copyrighted Legacy Works. Compare Defs.’ Mem., ECF No. 145-1
at 8, with Pl.-Intervenor’s Opp’n, ECF No. 148 at 3-4. Like ES,
ICC attached copyright registration certificates to Plaintiff-
Intervenor’s First Amended Complaint. See Pl.-Intervenor’s FAC,
ECF No. 138 at 18-19 ¶¶ 84-85. ICC alleges that the certificates
“cover[] the collective work as a whole and the underlying
contributions authored as works made for hire of ICBO,” id. at
18 ¶ 84; and ICC argues that those certificates “provide prima
facie evidence of the validity of the copyrights in the
collective and Legacy Works and the authorship and ownership
facts stated therein, i.e., ICBO’s ownership and authorship of
the collective and Legacy Works as works-for-hire,” Pl.-
Intervenor’s Opp’n, ECF No. 148 at 7 (citing 17 U.S.C.
§ 410(c)). ICC contends that the certificates can serve as
registrations for the individual, “constituent works”—the
individual Legacy Works—contained in the “collective works”
(i.e. Serial Publications). Id. at 8. 7
7 Under the Copyright Act, the term “collective work” means “a
work, such as a periodical issue, anthology, or encyclopedia, in
28
The IAPMO Entities, however, dispute the ICC Entities’
contention that the certificates demonstrate ICBO’s ownership in
the constituent parts (or the Legacy Works) of the Serial
Publications, Defs.’ Mem., ECF No. 145-1 at 8, because the
information in the certificates fails to indicate that “ICBO
sought to register anything but a ‘collective work,’” id. at 11.
The IAPMO Entities characterize ICC’s allegation—that the Legacy
Works were created as works made for hire on behalf of ICBO—as
“nothing more than a bare legal conclusion couched as a factual
allegation,” id. at 14, because the individual Legacy Works in
the Serial Publications were written by a different entity,
ICBO-ES, id. at 12-14.
“Although courts must, at times, resolve factual disputes
raised in threshold jurisdictional motions,” a court should
defer its jurisdictional decision when the disputed
jurisdictional facts are “indistinguishable from the central
question on the merits of who was at fault.” Hale v. United
which a number of contributions, constituting separate and
independent works in themselves, are assembled into a collective
whole.” 17 U.S.C. § 101. The Act defines the term “compilation,”
which includes collective works, as “a work formed by the
collection and assembling of preexisting materials or of data
that are selected, coordinated, or arranged in such a way that
the resulting work as a whole constitutes an original work of
authorship.” Id. Here, the parties agree that the Serial
Publications are a form of collective works. See Pls.’ Opp’n,
ECF No. 148 at 4 n.2; see also Defs.’ Reply, ECF No. 152 at 6-8,
14.
29
States, No. CV 13-1390 (RDM), 2015 WL 7760161, at *6 (D.D.C.
Dec. 2, 2015). Following discovery, the IAPMO Entities are free
to argue that the ICC Entities do not own the copyrighted Legacy
Works, that the transfer of the copyrighted Legacy Works did not
occur, and that ICBO did not own or author the collective works
and the constituent works. Such arguments, however, rely on the
resolution of contested factual issues and require that “the
parties first be afforded a more complete opportunity to
discover and to dispute the relevant facts.” Hale,
2015 WL 7760161 at *6.
The Court concludes that the three issues—(1) the alleged
ownership of the Legacy Works; (2) the alleged transfer of the
Legacy Works; and (3) the alleged underlying “works made for
hire”—are disputed jurisdictional issues that are inextricably
intertwined with the merits of the ownership element that the
ICC Entities must show to establish copyright infringement. See,
e.g., Latin Am. Music Co., Inc. v. Disco Hit Prods., No. CV 02-
1788 (ADC), 2008 WL 11500379, at *3 (D.P.R. June 13, 2008)
(finding that a disputed jurisdictional issue of plaintiff’s
ownership of copyrights existed where “the factual issue on
which subject matter jurisdiction turn[ed] [was] whether
[plaintiff] ha[d] valid copyrights for the songs it claims were
infringed”). This Court “must avoid resolving issues contested
on the merits under the banner of standing.” Pietrangelo v.
30
Refresh Club, Inc., No. 18-CV-1943 (DLF), 2019 WL 2357379, at *4
(D.D.C. June 4, 2019) (denying motion to dismiss for lack of
subject-matter jurisdiction where “the plaintiff [did not have]
the benefit of discovery, and the factual record remain[ed]
incomplete”). Magistrate Judge Robinson correctly concluded that
the ownership, transfer, and “works made for hire” issues should
be resolved on the merits. R & R, ECF No. 174 at 6-7. The Court
therefore finds that the operative complaints adequately allege
subject-matter jurisdiction, and the IAPMO Entities’ challenge
to the disputed factual issues is premature. See Herbert, 974
F.2d at 198; see also Hale, 2015 WL 7760161, at *6. Accordingly,
the Court DENIES the IAPMO Entities’ motions to dismiss for lack
of subject-matter jurisdiction. The IAPMO Entities may renew
their standing arguments after the parties engage in discovery.
B. Merits
The Court next turns to the merits. The IAPMO Entities
object to the R & R’s conclusions that: (1) the ICC Entities
sufficiently allege that the Legacy Organizations and ICC
assigned the copyrighted Legacy Works to ES; (2) the transfer
from ICBO to ICC included the copyrighted Legacy Works; (3) the
IAPMO Entities lack standing to challenge the “Confirmatory
Assignment”; and (4) the copyright registration certificates for
the Serial Publications (collective works) cover the individual
Legacy Works (constituent works). Defs.’ Objs., ECF No. 176 at
31
13-23. For the reasons explained below, the Court adopts
Magistrate Judge Robinson’s recommendations and overrules the
IAPMO Entities’ objections to the R & R. Before turning to the
objections, the Court will address the applicable pleading
standard at this stage of the proceedings.
1. The Applicable Pleading Standard
As an initial matter, the Court observes that the IAPMO
Entities attempt to convert their Rule 12(b)(6) motions into
motions for summary judgment. See, e.g., Defs.’ Partial Mot.,
ECF No. 77-1 at 15-20; Defs.’ Reply, ECF No. 90 at 10-14; Defs.’
Mem., ECF No. 145-1 at 18-21; Defs.’ Reply, ECF No. 152 at 21-
22. For example, the IAPMO Entities argue that “there is no
evidence that the individual ‘Legacy Work’ copyrights were
transferred,” Defs.’ Partial Mot., ECF No. 77-1 at 2 (emphasis
added); and that ES “failed to prove ownership with respect to
the individual Legacy Works,” id. at 18 (emphasis added). At the
motion to dismiss stage, however, there is no heightened
pleading standard. Twombly, 550 U.S. at 570 (“[W]e do not
require heightened fact pleading of specifics, but only enough
facts to state a claim to relief that is plausible on its
face.”).
The ICC Entities correctly note that “[t]his isn’t a fraud
case under Rule 9(b)—ES and ICC are not required to plead the
who, what, when, why, or how of the alleged corporate transfer
32
to satisfy Rule 8(a).” Pls.’ Resp., ECF No. 178 at 14. Indeed, a
complaint must contain “a short and plain statement of the claim
showing that the pleader is entitled to relief,” Fed. R. Civ. P.
8(a)(2), “in order to give the defendant fair notice of what the
. . . claim is and the grounds upon which it rests,” Twombly,
550 U.S. at 555 (citation and internal quotation marks omitted).
In ruling on the Rule 12(b)(6) motions, this Court evaluates the
ICC Entities’ operative complaints to determine whether the
factual allegations satisfy the pleading requirements of Iqbal
and Twombly. The Court may consider documents attached as
exhibits to the complaints, documents incorporated by reference,
and documents upon which the complaints rely without converting
the motions to dismiss into motions for summary judgment. Sierra
v. Hayden, 254 F. Supp. 3d 230, 237 (D.D.C. 2017).
As this Court previously explained, “at the motion to
dismiss stage . . . ‘[t]here is no requirement that copyright
claims must be pled with particularity.’” ICC Evaluation Serv.,
LLC, 2016 U.S. Dist. LEXIS 153518, at *8 (quoting Facebook, Inc.
v. Power Ventures, Inc., No. C 08-5780 JF (RS), 2009 WL 1299698,
at *4 (N.D. Cal. May 11, 2009)). “At the pleading stage, a party
alleging copyright infringement need only claim ownership over
the copyrighted work, that the party has registered the work in
accordance with statute, and that the defendant infringed.” Roe,
85 F. Supp. 3d at 99. “To require a plaintiff to do more, at the
33
motion to dismiss stage, would be to subject copyright
plaintiffs to a heightened level of pleading, something this
Court has been strictly proscribed from doing.” Warren v. John
Wiley & Sons, Inc., 952 F. Supp. 2d 610, 617 (S.D.N.Y. 2013).
2. The ICC Entities Sufficiently Allege that the
Legacy Organizations Transferred All of the
Copyrights to ICC, and ICC Transferred Its
Copyrights to ES
The IAPMO Entities do not dispute that ICBO—one of the
Legacy Organizations—transferred to ICC the copyrighted Serial
Publications pursuant to the “Restricted Donation Agreement.”
See Defs.’ Partial Mem., ECF No. 77-1 at 9-10; see also Pl.’s
Ex. 1, ECF No. 71-1 at 3. Rather, the IAPMO Entities argue that
ICBO did not transfer the copyrights in the individual Legacy
Works to ICC because ICBO only owned and registered the Serial
Publications—not the individual Legacy Works. See Defs.’ Mem.,
ECF No. 145-1 at 11-13. For the reasons explained below, the
Court adopts Magistrate Judge Robinson’s finding that the ICC
Entities “sufficiently allege that ICBO transferred all of its
copyrights after ICBO and ICC memorialized a ‘Restricted
Donation Agreement’ on January 31, 2003.” R & R, ECF No. 174 at
10.
“Section 204 of the Copyright Act invalidates attempted
transfers of copyright ownership made without a writing.” Atkins
v. Fischer, 331 F.3d 988, 991 (D.C. Cir. 2003) (citing 17 U.S.C.
34
§ 204(a)). A copyright transfer is valid “by operation of law”
or a written “instrument of conveyance, or a note or memorandum
of the transfer” that is “signed by the owner of the rights
conveyed or such owner’s duly authorized agent.” 17 U.S.C.
§ 204(a). Courts have recognized that “an oral assignment may be
confirmed later in writing.” Billy-Bob Teeth, Inc. v. Novelty,
Inc., 329 F.3d 586, 591 (7th Cir. 2003); accord Imperial
Residential Design, Inc. v. Palms Dev. Grp., Inc., 70 F.3d 96,
99 (11th Cir. 1995) (recognizing that “17 U.S.C. § 204(a) can be
satisfied by an oral assignment later ratified or confirmed by a
written memorandum of the transfer”).
In this case, the IAPMO Entities challenge two transfers:
(1) the transfer of the copyrights from the Legacy Organizations
to ICC; and (2) the transfer of the copyrights from ICC to ES.
R & R, ECF No. 174 at 10. With respect to the first transfer,
ICBO registered the Serial Publications with the U.S. Copyright
Office, and ICBO allegedly transferred its copyrights in the
Serial Publications to ICC on January 31, 2003 under the terms
of the “Restricted Donation Agreement.” TAC, ECF No. 70 at 8 ¶¶
37-38. And ICBO allegedly “intended that the entity that became
ES would assume all the evaluation activities then conducted by
ICBO and the other Legacy Organizations.” Id. at 8 ¶ 39. The
IAPMO Entities acknowledge that ICBO was the owner of the Serial
Publications because each copyright registration certificate
35
lists ICBO as the “copyright claimant.” Defs.’ Mem., ECF No.
145-1 at 11.
The IAPMO Entities do not contest that ICBO transferred all
of its copyrights to ICC. See R & R, ECF No. 174 at 10; see also
Defs.’ Objs., ECF No. 176 at 13. Indeed, the “Information
Statement” provides, in relevant part, that “ICBO . . . will
transfer and assign all of [its] assets and contracts to ICC
(ICBO) LLC,” and the “code-related assets and contracts . . .
will then be transferred to ICC under an agreement . . . .”
Pl.’s Ex. 3, ECF No. 70-3 at 37. And ICBO conveyed to ICC, inter
alia, the “original works of authorship, copyrights,” and “other
intellectual property rights.” Pl.’s Ex. 1, ECF No. 71-1 at 3.
The IAPMO Entities appear to argue that Magistrate Judge
Robinson did not consider a provision in the “Information
Statement” that states three Legacy Organizations—BOCA, ICBO-ES,
and SBCCI PST”—“will transfer all evaluation-related assets and
contracts to [ES].” Defs.’ Objs., ECF No. 176 at 13 (quoting
Pl.’s Ex. 3, ECF No. 70-3 at 38). Such an argument, however,
fails because Magistrate Judge Robinson based the conclusion—
that the ICC Entities sufficiently allege that the Legacy
Organizations and ICC intended to assign the copyrights in the
Legacy Works to ES—on all of the provisions in the “Information
Statement” and the “subsequent reorganization of the Legacy
Organizations.” R & R, ECF No. 174 at 12. The Court must
36
construe the operative complaints in the ICC Entities’ favor,
view the factual allegations as a whole, accept them as true,
and grant the ICC Entities the benefit of all inferences that
can be derived from the alleged facts. See Kowal, 16 F.3d at
1276. In doing so, the Court can reasonably infer from the
alleged facts and the documents attached to the operative
complaints that the Legacy Organizations transferred all of the
copyrights to ICC. The remaining question is whether those
copyrights included the individual Legacy Works contained within
the Serial Publications.
With regard to the second transfer of the copyrights from
ICC to ES, the IAPMO Entities’ argument—that ICC did not
transfer the copyrighted Legacy Works to ES—is unavailing for
two reasons. First, the allegations in the operative complaint
give rise to an inference that the “Confirmatory Assignment”
memorializes the oral agreement to transfer the copyrights to
ES, see TAC, ECF No. 70 at 8 ¶ 35; and the “Confirmatory
Assignment” makes clear that “on or about January 31, 2003, ICC
intended to donate and assign and did donate and assign to [NES]
. . . all rights, title and interest in and to all of . . . [the
works at issue], including the copyrights to and copyright
registrations for [the works at issue],” Pl.’s Ex. 2, ECF No.
70-2 at 2. NES later became ES. TAC, ECF No. 70 at 10 ¶¶ 45-46.
ES alleges that ICC transferred the copyrighted Legacy Works to
37
NES on January 31, 2003. Id. at 8 ¶ 40. The ICC Entities
attached a letter with enclosures from the President of ES, John
Noose, to the Third Amended Complaint, which states that “[o]n
February 1, 2003, ICC-ES assumed control of approximately 1850
evaluation reports, . . . called legacy reports.” Pl.’s Ex. 3,
ECF No. 70-3 at 71. The IAPMO Entities’ argument that the
“Confirmatory Assignment” was “belated,” Defs.’ Partial Mem.,
ECF No. 77-1 at 2, is unavailing because persuasive authority
recognizes that “a prior oral grant that is confirmed by a later
writing becomes valid as of the time of the oral grant, even if
the writing is subsequent to the initiation of litigation on the
copyright infringement.” Magnuson v. Video Yesteryear, 85 F.3d
1424, 1428 (9th Cir. 1996). And the IAPMO Entities’ contention—
that the “Confirmatory Assignment” as evidence of an oral
agreement “cannot stand alone,” Defs.’ Partial Mem., ECF No. 77-
1 at 13; see also Pls.’ Resp., ECF No. 178 at 15 n.9—is equally
unavailing. The ICC Entities need not provide any evidence at
the motion to dismiss stage.
Next, Magistrate Judge Robinson found—and this Court
agrees—that the ICC Entities “clearly allege that the Legacy
Organizations and ICC intended to assign the Legacy Works to
[ES].” R & R, ECF No. 174 at 12; see also TAC, ECF No. 70 at 9 ¶
42, 10 ¶ 44. The IAPMO Entities’ argument—that “an oral
agreement [to transfer the ICC’s copyrights to ES] would have
38
been entirely inconsistent with the manner in which all other
aspects of the 2003 ICC transfer were handled,” Defs.’ Objs.,
ECF No. 176 at 14—is improper at this stage without the benefit
of discovery. The Court draws a reasonable inference from the
alleged facts and the documents attached to the operative
complaints that the “board members [of the Legacy Organizations]
in 2003 communicated verbally and orally transferred the Legacy
Works to [ES].” R & R, ECF No. 174 at 12; see also TAC, ECF No.
70 at 9-10 ¶¶ 41-43. Contrary to the IAPMO Entities’ assertion,
Defs.’ Objs., ECF No. 176 at 14, an exact allegation of an oral
agreement or oral transfer is not required at the motion to
dismiss stage, see, e.g., Iqbal, 556 U.S. at 678; Twombly, 550
U.S. at 556; Kowal, 16 F.3d at 1276. Neither is an allegation
that “a prior agreement or transfer actually took place.” Defs.’
Objs., ECF No. 176 at 14. The Court reasonably infers from the
reorganization and consolidation of the Legacy Organizations
that an oral transfer of the copyrights from ICC to ES occurred
at board meetings in 2003. See TAC, ECF No. 70 at 8-10 ¶¶ 40-43. 8
8 Having found that the factual allegations and the documents
attached to the operative complaints support the reasonable
inference that there was an oral agreement to transfer the
copyrights from ICC to ES, the Court agrees with Magistrate
Judge Robinson that there is no disagreement between the
transferor—ICC—and the transferee—ES—about the existence of the
oral transfer of the copyrights. See R & R, ECF No. 174 at 13
(collecting cases). The IAPMO Entities’ reliance on Marya v.
Warner/Chappell Music, Inc., 131 F. Supp. 3d 975 (C.D. Cal.
2015), is misplaced. See Defs.’ Objs., ECF No. 176 at 19. In
39
3. The ICC Entities Sufficiently Allege that ICBO
Transferred the Copyrighted Legacy Works to ICC
Neither party disputes that the copyright registration
certificates for the Serial Publications state that ICBO is the
author of the collective works, and that each certificate left
blank the section indicating whether the works were being
published as contributions. See Defs.’ Reply, ECF No. 90 at 11;
see also Pl.-Intervenor’s Opp’n, ECF No. 148 at 4. The IAPMO
Entities do not challenge that ICBO owned the copyrights in the
collective works and that ICBO transferred those copyrights to
ICC. See Defs.’ Mem., ECF No. 145-1 at 8. Rather, the IAPMO
Entities facially attack ICC’s allegation that the certificates
covered all “works made for hire,” including the individual
Legacy Works. See id. at 14; see also Defs.’ Objs., ECF No. 176
at 15-18.
ruling on cross-motions for summary judgment, the court in Marya
found that the defendants failed to present any evidence of a
written or oral transfer. 131 F. Supp. 3d at 1002. The court
explained that the defendants were not barred from challenging
the existence of the transfer there. Id. In this case, however,
there is no summary judgment record. The IAPMO Entities will
have an opportunity to challenge the transfer after discovery,
but such a challenge is improper at the motion to dismiss stage.
Cf. Marya, 131 F. Supp. 3d at 1002. Accordingly, the Court
overrules the IAPMO Entities’ objection to Magistrate Judge
Robinson’s conclusion that the IAPMO Entities lack standing to
challenge the “Confirmatory Assignment” at this stage of the
proceedings. See R & R, ECF No. 174 at 13; see also Defs.’
Objs., ECF No. 176 at 18-20.
40
Section 101 of the Copyright Act defines a “work made for
hire” as follows:
(1) a work prepared by an employee within the
scope of his or her employment; or
(2) a work specially ordered or commissioned
for use as a contribution to a collective
work, as part of a motion picture or other
audiovisual work, as a translation, as a
supplementary work, as a compilation, as an
instructional text, as answer material for a
test, or as an atlas, if the parties expressly
agree in a written instrument signed by them
that the work shall be considered a work made
for hire.
17 U.S.C. § 101. The first part of this definition “applies to
works created by employees,” whereas “the second applies to
works created by independent contractors.” Lulirama Ltd., Inc.
v. Axcess Broad. Servs., Inc., 128 F.3d 872, 877 (5th Cir. 1997)
(citing Reid, 490 U.S. at 742-743). In Reid, the Supreme Court
explained that “[t]he structure of § 101 indicates that a work
for hire can arise through one of two mutually exclusive means,
one for employees and one for independent contractors, and
ordinary canons of statutory interpretation indicate that the
classification of a particular hired party should be made with
reference to agency law.” Reid, 490 U.S. at 742–43.
Here, it is undisputed that ICBO was a “single statutory
member” of ICBO-ES. Pl.’s Ex. 3, ECF No. 70-3 at 20. The ICC
Entities allege that the Legacy Works within the Serial
Publications were “works made for hire” by ICBO-ES for ICBO.
41
R & R, ECF No. 174 at 17 (citing TAC, ECF No. 70 at 15 ¶ 62;
Pl.’s Ex. 3, ECF No. 70-3 at 20; Pl.-Intervenor’s Opp’n, ECF No.
148 at 7-10). According to the IAPMO Entities, ICBO-ES was the
author of the copyrighted Legacy Works (constituent works), and
ICBO-ES retained ownership of those copyrights. See Defs.’
Partial Mem., ECF No. 77-1 at 3 (arguing that “[o]wnership of
the individual Legacy Work copyrights would have remained with
the Legacy Works’ authors”); see also Defs.’ Mem., ECF No. 145-1
at 12-15.
Acknowledging that the ICC Entities have yet to support
their allegations with evidence of ICBO’s ownership of the
constituent Legacy Works, Magistrate Judge Robinson found that
such evidence is not needed at the motion to dismiss stage, and
that “the relationship between ICBO and ICBO-ES creates a
reasonable inference . . . that the constituent works were made
for hire.” R & R, ECF No. 174 at 18. Magistrate Judge Robinson
concluded that “it is plausible that ICBO-ES made the
constituent works for hire as an agent of ICBO, the ‘single
statutory member’ of ICBO-ES,” id. at 19 (quoting Pl.’s Ex. 3,
ECF No. 70-3 at 20); and that it is “plausible that [ES] owns
the Legacy Works, which were properly registered and owned by
ICBO,” id. The Court agrees.
The IAPMO Entities object to the R & R’s conclusions,
arguing that the ICC Entities have not alleged that ICBO owned
42
the copyrights in the constituent works. Defs.’ Objs., ECF No.
176 at 15. The IAPMO Entities argue that “the mere fact that
ICBO is the ‘single statutory member’ of ICBO-ES is of no
consequence in the determination of whether a work should be
considered a ‘work for hire.’” Id. at 16. The IAPMO Entities
contend that Plaintiff-Intervenor’s First Amended Complaint
contains “no specific pleadings of fact” that “could lead to the
inference that ICBO-ES was either an employee or an independent
contractor of ICBO.” Id. at 18. The IAPMO Entities go on to
argue that the R & R failed to include a discussion about the
relevant factors for an employer-employee relationship. Id.
As the ICC Entities correctly point out, Magistrate Judge
Robinson’s reasoning was consistent with agency law. Pls.’
Resp., ECF No. 178 at 13; see also R & R, ECF No. 174 at 19. “An
agent acting in the same transaction or matter on behalf of more
than one principal may be [a subagent, an agent for
coprincipals, or both].” Restatement (Third) of Agency § 3.14
(2006); see also Kelley v. S. Pac. Co., 419 U.S. 318, 324 (1974)
(a servant “could be deemed to be acting for two masters
simultaneously”). According to the ICC Entities, “[u]nder the
theory of subagency, ICBO-ES employees who drafted the Legacy
Works for the ultimate benefit of ICBO would have been agents of
both ICBO-ES and ICBO, and ICBO-ES in directing its employees to
do so, would have been an agent of ICBO.” Pls.’ Resp., ECF No.
43
178 at 13. The ICC Entities note that “any Evaluation Report or
Acceptance Criteria ‘authored’ by ICBO-ES as an agent of ICBO
necessarily was authored by an individual who had an employment
or agency relationship with ICBO-ES.” Id. at 13 n.7. In
response, the IAPMO Entities argue that “this Court need not
delve into the nuances of agency and sub-agency law because the
complaints at issue only contain legal conclusions and rely on
generalizations, inferences and assumptions.” Defs.’ Reply, ECF
No. 179 at 5.
The ICC Entities need only plead sufficient facts to give
rise to an inference that an agency relationship existed. Cf.
Jackson v. Loews Wash. Cinemas, Inc., 944 A.2d 1088, 1097 (D.C.
2008) (“The existence of an agency relationship is a question of
fact, for which the person asserting the relationship has the
burden of proof.”). The ICC Entities have done so. ICC alleges
that: (1) ICBO and ICBO-ES regularly published the Serial
Publications from at least 1977; (2) ICBO owned the copyrights
in the Serial Publications and the constituent works; (3) ICBO
was the author and owner of the constituent works within the
Serial Publications; and (4) each constituent work was created
as a work made for hire by ICBO-ES on behalf of ICBO. Pl.-
Intervenor’s FAC, ECF No. 138 at 10-11 ¶¶ 48-51. ICBO was
established in 1958, Pl.’s Ex. 3, ECF No. 70-3 at 17; and ICBO-
ES did not exist before 1985, Pl.-Intervenor’s Opp’n, ECF No.
44
148 at 9. There is no dispute that each copyright registration
certificate shows that ICBO, rather than ICBO-ES, registered the
Serial Publications as the author and claimant, and ICBO
continued to register those works without identifying ICBO-ES
until 2001. See id. According to the “Information Statement,”
“ICBO-ES has a single statutory member: ICBO.” Pl.’s Ex. 3, ECF
No. 70-3 at 20.
Contrary to the IAPMO Entities’ contentions, see Defs.’
Reply, ECF No. 179 at 5, the Court can draw a reasonable
inference based on the alleged facts and the documents attached
to Plaintiff-Intervenor’s First Amended Complaint that the
authors of the copyrighted Legacy Works were employees of both
ICBO-ES and ICBO, and that there was an agency relationship
between ICBO and ICBO-ES, see Kowal, 16 F.3d at 1276. The Court
therefore finds that it is plausible that ES is the owner of the
Legacy Works as a result of the ICBO-to-ICC and ICC-to-ES
transfers based on the inference that the Legacy Works were
“works made for hire” by ICBO-ES for ICBO. 9
9 One of the IAPMO Entities’ two remaining arguments—that
Plaintiff-Intervenor’s FAC rather than Plaintiff’s TAC alleges a
“works made for hire” theory, Defs.’ Objs., ECF No. 176 at 17—is
unavailing because the IAPMO Entities cite no authority that
prohibits a plaintiff-intervenor from asserting alternative
theories to protect its claimed interest in the property at
issue in a case. The Court will not consider the IAPMO Entities’
next argument—that the ICC Entities fail to cite any authority
indicating that a limited liability company (“LLC”) could be an
agent of the LLC’s sole statutory member for purposes of the
45
4. The ICC Entities Sufficiently Allege that the
Copyright Registration Certificates for the
Serial Publications Cover the Individual Legacy
Works
Finally, the Court considers the IAPMO Entities’ objection
to Magistrate Judge Robinson’s conclusion that the ICC Entities
“have exceeded what this [C]ourt has previously found
sufficient” with respect to the copyright registration
certificates for the Legacy Works contained within the Serial
Publications. R & R, ECF No. 174 at 20; see also Defs.’ Objs.,
ECF No. 176 at 20-23. According to the IAPMO Entities,
Magistrate Judge Robinson “incorrectly concluded that in these
circumstances the applicable collective work registrations could
serve to effectively register the underlying constituent works
as well.” Defs.’ Objs., ECF No. 176 at 21. The ICC Entities
disagree, arguing that Magistrate Judge Robinson properly
concluded that the ICC Entities sufficiently allege ownership
and registration of the constituent works, the Legacy Works,
given that the “collective work registration can simultaneously
register constituent works.” Pls.’ Resp., ECF No. 178 at 19
(quoting R & R, ECF No. 174 at 16). The ICC Entities contend
that federal law, the Federal Rules of Civil Procedure, and this
“works made for hire” doctrine, Defs.’ Reply, ECF No. 179 at 6-
7—because it was not presented to Magistrate Judge Robinson. See
M.O. v. District of Columbia, 20 F. Supp. 3d 31, 37 (D.D.C.
2013) (explaining that “parties may not present new issues or
arguments to the district judge”).
46
Court require nothing more than factual allegations that the
copyrights to the Legacy Works were registered with the U.S.
Copyright Office along with the collective copyright
registrations. Id. at 17-18. For the reasons articulated below,
the Court agrees.
In denying the IAPMO Entities’ motion to dismiss the
copyright infringement claim in the First Amended Complaint,
this Court relied on the four elements set forth in Newborn v.
Yahoo!, Inc., 391 F. Supp. 2d 181 (D.D.C. 2005): “(1) which
specific original works form the subject of the copyright claim;
(2) that the plaintiff owns the copyrights in those works;
(3) that the copyrights have been registered in accordance with
the statute; and (4) by what acts [and] during what time the
defendant infringed the copyright.” ICC Evaluation Serv., LLC,
2016 U.S. Dist. LEXIS 153518, at *5 (quoting Newborn, 391 F.
Supp. 2d at 186). A plaintiff must plead these four elements to
survive a motion to dismiss. Id. Here, the IAPMO Entities
challenge the third Newborn element. Defs.’ Objs., ECF No. 176
at 21.
As noted in the R & R, the third Newborn element “can be
ambiguous when applied to collective works.” R & R, ECF No. 174
at 15. “Section 409 of the Copyright Act provides that an
application for registration of a compilation ‘shall be made on
a form prescribed by the Register of Copyrights and shall
47
include,’ as relevant here, the name of the author or authors,
the title of the work, and ‘an identification of any preexisting
work or works that it is based on or incorporates, and a brief,
general statement of the additional material covered by the
copyright claim being registered.’” Metro. Reg’l Info. Sys.,
Inc. v. Am. Home Realty Network, Inc., 722 F.3d 591, 597 (4th
Cir. 2013) (quoting 17 U.S.C. § 409). “As applied to a
collective work whose author has also acquired the copyrights in
individual component works, the text of Section 409 is ambiguous
at best.” Id. Courts addressing this issue have looked to
guidance from the U.S. Copyright Office. See Alaska Stock, LLC
v. Houghton Mifflin Harcourt Pub. Co., 747 F.3d 673, 679, 685
(9th Cir. 2014).
“Since 1980, the [U.S.] Copyright Office has permitted, as
a matter of practice, copyright registrations of collective
works to cover underlying contributions where the rights in
those contributions belong to the claimant even though the
individual contributors are not named in the registration form.”
Id. (citation omitted). The U.S. Copyright Office encourages,
but does not require, applicants to provide a list of all the
contributors to a collective work, R & R, ECF No. 174 at 15
(citing U.S. Copyright Office, Compendium of U.S. Copyright
Office Practices § 613.10(F) (3d ed. 2014) [hereinafter
“Compendium III”]); and the U.S. Copyright Office “only requires
48
information related to the collective work to register the
underlying, constituent works if all belong to the same
registrant,” id. (citing 17 U.S.C. § 408(c)(1); Compendium III
§ 613.10(F)).
In Alaska Stock, LLC, the United States Court of Appeals
for the Ninth Circuit held that the plaintiff “successfully
registered the copyright both to its collections and to the
individual images contained therein” because “[t]he statute
required identification of the author and title of the ‘work,’
which was the collective work, and extended registration to the
component parts if the party registering the collective work
owned the copyright to the component parts, as [the plaintiff]
did.” 747 F.3d at 685; see also Metro. Reg’l Info. Sys., Inc.,
722 F.3d at 598 (recognizing that registrations of collective
works are “sufficient to permit an infringement action on behalf
of component works, at least so long as the registrant owns the
rights to the component works as well”).
Relying on Alaska Stock, LLC, 747 F.3d at 685, and
Metropolitan Regional Information Systems, Inc., 722 F.3d at
598-99, Magistrate Judge Robinson found that the ICC Entities
sufficiently allege that they registered both the collective and
constituent works. R & R, ECF No. 174 at 16-17. The IAPMO
Entities do not address or attempt to distinguish Alaska Stock,
LLC or Metropolitan Regional Information Systems, Inc. See,
49
e.g., Defs.’ Objs., ECF No. 176 at 1-23; Defs.’ Reply, ECF No.
179 at 1-10. Rather, the IAPMO Entities argue that the ICC
Entities’ allegation that the Legacy Works were registered is a
“bare allegation.” Defs.’ Reply, ECF No. 179 at 9. ES asserts—
and this Court agrees—that “[a] copyright claimant of a
collective work who also owns the constituent works within the
collection may bring infringement claims based on that
registration for infringement of the collective work, a
particular work within the collection, or both.” Pl.’s Opp’n,
ECF No. 83 at 21-22 (citing Alaska Stock, LLC, 747 F.3d at 685;
Metro. Reg’l Info. Sys., Inc., 722 F.3d at 598).
The ICC Entities allege sufficient facts to satisfy the
third Newborn element—the ICC Entities must plead that the
copyrights have been registered in accordance with the Copyright
Act—to survive the IAPMO Entities’ motions to dismiss. See
Newborn, 391 F. Supp. 2d at 186. It is undisputed that the
copyright registration certificates for the Serial Publications
are “collective works.” See Defs.’ Reply, ECF No. 179 at 9. The
IAPMO Entities acknowledge that “the complaints in question
allege that the Legacy Works were registered.” Defs.’ Objs., ECF
No. 176 at 21 n.8. The IAPMO Entities argue—and the Court
disagrees—that the ICC Entities fail to allege “any facts” for
this Court to conclude that the Legacy Works were included as
part of the documents contained in the registered Serial
50
Publications. Id. at 21. According to the ICC Entities, ICBO
registered the Serial Publications as collective works with the
Copyright Office, and the Legacy Works were registered as part
of those collective works. See TAC, ECF No. 70 at 18 ¶¶ 79-80,
19 ¶¶ 85-86, 23 ¶ 107, 24 ¶¶ 112-15, 25 ¶¶ 120-21, 29 ¶ 142, 30
¶¶ 148-49, 32 ¶¶ 159-60; see also Pl.-Intervenor’s FAC, ECF No.
138 at 18 ¶¶ 84-85, 19-20 ¶ 89, 20 ¶¶ 90, 94, 21 ¶ 98, 22 ¶¶ 99-
101, 23-24 ¶¶ 105-106, 24 ¶ 110, 25-26 ¶¶ 115-16, 26 ¶ 120, 27 ¶
121.
For example, the ICC Entities allege that “[e]ffective
January 22, 1991, ICBO registered with the Copyright Office its
copyright in ICBO-ES Evaluation Report No. ER-3899 (issued
August 1990), under copyright registration number TX 2-998-540.”
TAC, ECF No. 70 at 19 ¶ 85; see also Pl.-Intervenor’s FAC, ECF
No. 138 at 19-20 ¶ 89. And the ICC Entities attached the
corresponding exhibit, which contains the copyright registration
for Volume XII of “Evaluation Reports” with the date of first
publication on October 26, 1990. E.g., Pl.’s Ex. 21, ECF No. 70-
21 at 2-4; Pl.-Intervenor’s Ex. 18, ECF No. 138-18 at 2-4. As
such, the ICC Entities allege that ICBO-ES Evaluation Report No.
ER-3899, which was issued in August 1990, was contained in the
twelfth volume of the “Evaluation Reports” Serial Publication,
and that Serial Publication was registered under copyright
registration number TX 2-998-540. See Pls.’ Resp., ECF No. 178
51
at 18. The ICC Entities assert similar factual allegations for
each Legacy Work and attach the corresponding copyright
registration certificate as an exhibit. The Court therefore
finds that it is plausible that the constituent Legacy Works
were registered as part of the registrations for the Serial
Publications (collective works). See, e.g., Alaska Stock, LLC,
747 F.3d at 685; Metro. Reg’l Info. Sys., Inc., 722 F.3d at 598.
* * *
The Court concludes that the ICC Entities have sufficiently
pled the Newborn elements, and plausibly stated claims for
copyright infringement. Accordingly, the Court DENIES the IAPMO
Entities’ Rule 12(b)(6) motions.
V. Conclusion
For the reasons set forth above, the Court ADOPTS the R & R
in its entirety, and DENIES the IAPMO Entities’ motions to
dismiss Plaintiff’s Third Amended Complaint and Plaintiff-
Intervenor’s First Amended Complaint. An appropriate Order
accompanies this Memorandum Opinion.
SO ORDERED.
Signed: Emmet G. Sullivan
United States District Judge
April 17, 2020
52