Icc Evaluation Service, LLC v. International Association of Plumbing and Mechanical Officials, Inc.

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