United States District Court, D. New Hampshire
J. McAuliffe United States District Judge
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.
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).
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).
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.”).
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.
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.
copyright policy governing the standards development process
(the “Policy”) is fairly
straightforward. 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.
relevant part, the Policy states:
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
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).
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.
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.
defendant, however, characterizes Clark's role quite
differently - as the Tiger Team 1 “designated
‘scribe.'” 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.
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.
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.
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
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
[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.
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[:]
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
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.
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 ...