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Intellitech Corp. v. Institute of Electrical and Electronics Engineers

United States District Court, D. New Hampshire

May 23, 2018

Intellitech Corporation, Plaintiff
The Institute of Electrical and Electronics Engineers, Inc. a/k/a IEEE, Defendant


          Steven J. McAuliffe United States District Judge

         In this suit for copyright infringement, plaintiff, Intellitech Corporation, alleges that defendant, The Institute of Electrical and Electric Engineers (“IEEE”), infringed what it claims to be its original, registered, work, entitled “Clause for a Pipeline v. 20.” Intellitech seeks injunctive relief, statutory damages, attorneys' fees, and costs. Plaintiff moves for summary judgment with respect to liability. Defendant, for its part, seeks partial summary judgment on plaintiff's requests for statutory damages, attorneys' fees and injunctive relief. For the reasons given below, both motions for summary judgment are necessarily denied.


         When ruling on a motion for summary judgment, the court is “obliged to review the record in the light most favorable to the nonmoving party, and to draw all reasonable inferences in the nonmoving party's favor.” Block Island Fishing, Inc. v. Rogers, 844 F.3d 358, 360 (1st Cir. 2016) (citation omitted). Summary judgment is appropriate when the record reveals “no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a).

         In this context, a factual dispute “is ‘genuine' if the evidence of record permits a rational factfinder to resolve it in favor of either party, and ‘material' if its existence or nonexistence has the potential to change the outcome of the suit.” Rando v. Leonard, 826 F.3d 553, 556 (1st Cir. 2016) (citation omitted). Consequently, “[a]s to issues on which the party opposing summary judgment would bear the burden of proof at trial, that party may not simply rely on the absence of evidence but, rather, must point to definite and competent evidence showing the existence of a genuine issue of material fact.” Perez v. Lorraine Enters., 769 F.3d 23, 29-30 (1st Cir. 2014). In other words, if the nonmoving party's “evidence is merely colorable, or is not significantly probative, ” no genuine dispute as to a material fact has been proved, and summary judgment may be granted. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249-50 (1986) (citations omitted).

         So, to defeat a properly supported motion for summary judgment, the non-movant must support his or her factual claims with evidence that conflicts with that proffered by the moving party. See generally Fed.R.Civ.P. 56(c). It naturally follows that while a reviewing court must take into account all properly documented facts, it may ignore a party's bald assertions, speculation, and unsupported conclusions. See Serapion v. Martinez, 119 F.3d 982, 987 (1st Cir. 1997). See also Scott v. Harris, 550 U.S. 372, 380 (2007) (“When opposing parties tell two different stories, one of which is blatantly contradicted by the record, so that no reasonable jury could believe it, a court should not adopt that version of the facts for purposes of ruling on a motion for summary judgment.”).


         The IEEE is a not-for-profit corporation that, with the involvement and assistance of employees and expert volunteers, develops and publishes technical standards applicable in a wide range of electrical and electronic endeavors. Those standards are typically developed by “working groups” comprised of industry participants collaborating together. Once finalized, the standards are published by IEEE, and made available to IEEE members, as well as members of the general public.

         To develop general technical standards, working group members participate in meetings, typically held weekly or biweekly, draft and review position pieces, and create and review presentations. Bennett Declaration (Document No. 13-4) ¶ 4; Clark Declaration (Document No. 23-1) at ¶ 4. Meetings are usually conducted telephonically or remotely via Webex or other remote conferencing software. Bennett Declaration at ¶ 4. Each working group has its own password protected website for use, called a “grouper” site. Id. at ¶ 6. The grouper site acts as a repository for the group's working materials, including drafts or other materials group members may want to review or consider. Group members routinely upload drafts, proposed language, and presentations to the grouper site for review and comment. Id. at ¶ 8. Minutes from group meetings are also stored on the grouper site. Id. at ¶ 6.

         IEEE's copyright policy governing the standards development process (the “Policy”) is fairly straightforward.[1] It requires that “[a]ll contributions to IEEE standards development . . . meet the requirements outlined in this clause.” Document No. 13-5 (emphasis added). Two definitions in the Policy are relevant to the parties' dispute. The first defines “published, ” as:

[M]aterial for which a claim of copyright is apparent (e.g., the presence of the copyright symbol ©; an explicit statement of copyright ownership or intellectual property rights; stated permission to use text; a text reference that indicates the insertion of text excerpted from a copyrighted work; or a visual indication of an excerpt from another work, such as indented text).

Id. The second term, “work product, ” is defined as: “the compilation of or collective work of all participants (e.g., a draft standard; the final approved standard; draft Industry Connections white paper; Industry Connections web site).” Id.

         In relevant part, the Policy states:

7.2 Policy
The IEEE owns the copyright in all Work Products.
Participants are solely responsible for determining whether disclosure of any contributions that they submit to the IEEE requires the prior consent of other parties and, if so, to obtain it.
7.2.1 Contributions from previously Published sources All contributions from previous Published sources that are not Public Domain shall be accompanied by a Copyright Permission Form that is completed by the copyright owner, or by a person with the authority or right to grant copyright permission. The Copyright Permission Form shall outline the specific material being used and the planned context for its usage in the Work Product.
7.2.2 Contributions not previously Published For any contribution that has not been previously Published, and that is not Public Domain:
a) The IEEE has the non-exclusive, irrevocable, royalty-free, worldwide rights (i.e., a license) to use the contribution in connection with the development of the Work Product for which the contribution was made.
Copyright ownership of the original contribution is not transferred or assigned to the IEEE.

Id. (all emphasis in original).

         The events giving rise to this dispute arose out of IEEE's efforts to develop a technical standard for “Test Access Architecture for Three-Dimensional Stacked Integrated Circuits.” The P1838 working group, tasked with the development of the standard, was divided into three subgroups called “Tiger Teams.” Each Tiger Team was assigned responsibility for various aspects of the overall standard, and the teams worked separately on concepts and proposed language for their assigned areas. Breitfelder Declaration (Document No. 57-3) at ¶ 3. Intellitech's CEO, Christopher J. Clark, was a member of Tiger Team 1. Clark has a long history with IEEE, having volunteered with the organization for over 24 years, chairing three different working groups during that time.

         The parties disagree about the role Clark played on Tiger Team 1. Clark argues that, while participating in the working group, he developed Intellitech's “position piece” on how serial access and pipeline registers should be managed by A.3d standard “[e]ntirely on his own, ” and retained and exercised exclusive control over the document he created. Pl.'s Mem. in Supp. of Mot. for Summary Judgment at 4; Clark Declaration (Document No. 60-2) at ¶¶ 13-16. Clark says he distributed multiple versions of the document to his team members, but always in uneditable electronic form, bearing an Intellitech “watermark.” Clark Declaration (Document No. 23-1) at ¶ 7. And, Clark says that, as the working group discussed his document, he refined it, presenting and explaining the rationale for Intellitech's position as it evolved. Clark Declaration (Docket No. 23-1) at ¶ 7. Clark contends he “named the Intellitech position piece, in its final form, ‘Clause for a Pipeline v. 20'” (hereinafter, the “Clause”). Pl.'s Mem. in Supp. of Mot. for Summary Judgment at 5.

         The defendant, however, characterizes Clark's role quite differently - as the Tiger Team 1 “designated ‘scribe.'”[2] Def.'s Mem. in Opp. to Summary Judgment at 4. Defendant draws a distinction between PowerPoint slide presentations Clark made to the team (“position pieces”) and the team's collaborative development of the Clause, which, defendant says, “contained language proposed and formatted for the purpose of comprising, or being included in, the draft P1838 standard[, ] and which reflected the consensus of the team.” Id. at 4-5. Defendant takes the position that Clark was developing, compiling, and presenting language for the team to consider and eventually incorporate into the draft standard. The proposed Clause, as evolved, represented the “consensus and collective judgment of the team as to how to express the ideas they were jointly developing.” Id. at 12.

         In any event, on April 10, 2014, Clark circulated an early version of the Clause to the Tiger Team. He wrote: “[h]ere is the foundational clause needed to describe pipeline bits. I have come up with ‘short names' for the paths that everyone had selected last week. I use those path names to create a set of rules and recommendations.” Document No. 57-2, at p. 1.

         Prior to the Tiger Team meeting on May 8, 2014, Clark circulated another version of the Clause, writing: “I'm attaching a proposed clause, subject to [working group] changes, on the pipeline register.” Document No. 57-2, at p. 6. And, at the Tiger Team meeting on May 8, 2014, Clark told the team that he had “developed a clause for the pipeline.” Document No. 13-6, at p. 16. In the context of the team's discussion of the document, team member Eric Jan Marinissen commented, “It looks like it's in the IEEE template.” Id., at p. 17. Clark responded, “It's exactly that. . . Written to be able to get in to the standard.” Id.

         On May 13, 2014, Clark circulated yet another version of the Clause prior to the team's next meeting. Document No. 66-6, at p. 1. He wrote: “Here is the latest document which hopefully reflects the position of the majority of TT1 members.” Id. The team continued to discuss the latest version of the Clause at the next meeting (May 15, 2014). See Document No. 13-6, at p. 19. That process continued over the next several months, with Clark circulating evolving versions of the Clause to the team, and the team discussing the document at their meetings. See, e.g., Document No. 57-2, at p. 12 (Clark circulating version reflecting revisions “as discussed, ” and requesting that team members “tweak it and make it ready for a vote as a whole clause in the coming weeks”); Document No. 13-6, at p. 20-28 (May 29, 2014, and June 5, 2014, team meeting minutes); Document No. 57-2, at p. 20 (June 12, 2014, email from Clark, circulating “most recent version” of Clause); Document No. 13-6, at p. 29 (June 12, 2014, team meeting minutes, including agenda item: “Review CJ's clause-for-pipeline-v7.pdf”).

         At a Tiger Team 1 meeting held on July 10, 2014, Marinissen raised concerns about the Intellitech watermark Clark had included on all versions of the Clause he presented and circulated. Document No. 13-6, p. 33. Marinissen asked Clark to either remove the watermark, or change the mark to P1838. Clark noted that, until the team “vote[d] on something for P1838 and [made] it part of the standard, he consider[ed] [the Clause] Intellitech's[, and] would rather keep the Intellitech watermark.” Id. The discussion continued:

[Clark] doesn't want people to copy it and call it their own. It was then pointed out that this is a group effort and some of the ideas in the slides are from others in the working groups. . . . [S]ome of the information that gets added to this document is from the working group discussion and it is not appropriate to have the [I]ntellitech watermark. [Clark] said he would like to continue the way he is doing it at the moment.

Document No. 13-6, p. 33.

         Clark responded further to Marinissen's concerns regarding Intellitech's watermark in an email dated July 17, 2014. Document No. 23-4, p. 123. Clark wrote:

I went back and reviewed v1 to v14 [of the Clause, ] and I could not identify a figure or text which could stand-alone be copyrightable to another [working group] member, hence I could not see whether joint authorship existed. The words and figures, I authored, even if it was in response to me asking questions as to ‘what is it you want?' to [working group] members. . . . I am not the editor nor am I creating or working with the P1838 draft which is copyright IEEE. You can see a distinct difference between what I supply to the P1149.10 [working group] which is the P1149.10 draft with a copyright attributed to the IEEE[, ] and the attached document which is in ‘Clause' form with rules, recommendations. Figures in P1149 which are authored by Intellitech were donated to the [working group] to use in the draft. That is the correct terminology[:] “donated.”
I would say the discussion is ‘much ado about nothing' as I had already said I would donate the material to the IEEE should we accept this inclusion with the draft. All in all we should be creating an air of encouragement and thanks when members are contributing numerous hours to creation of content for the standard. It's an entirely different effort than attending meetings.

         Document No. 23-4, p. 123. In that same email, Clark wrote that he had not made any changes to the current version of the Clause “since last week, ” and, “[f]or homework due next week, ” the team should “review the clause lines 1-121 and send feedback to the group of suggested changes, otherwise I would entertain a motion next week to accept the clause as written.” Id.

         On July 24, 2014, Clark circulated version 16 of the Clause. He wrote: “This is the proposed clause for pipeline and registration cells. Version 16 captures the changes . . . from our last meeting. . . . I suspect that we are close to wrapping up in a week or two. The proposal captures all the input supplied from various members (i.e.[, ] we ...

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