Jacobsen v. Deseret Book Co., 01-4027.

• Decision Date: 19 April 2002
• Docket Number: No. 01-4036.,No. 01-4027.,01-4027.,01-4036.
• Citation: 287 F.3d 936
• Parties: Gene S. JACOBSEN, Plaintiff-Appellant and Cross-Appellee, v. DESERET BOOK COMPANY, a Utah corporation; Dean Hughes, Defendants-Appellees and Cross-Appellants.
• Court: U.S. Court of Appeals — Tenth Circuit

Page 936

287 F.3d 936

Gene S. JACOBSEN, Plaintiff-Appellant and Cross-Appellee, v. DESERET BOOK COMPANY, a Utah corporation; Dean Hughes, Defendants-Appellees and Cross-Appellants.

No. 01-4027.

No. 01-4036.

United States Court of Appeals, Tenth Circuit.

April 19, 2002.

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Brent O. Hatch (Mark R. Clements with him on the briefs) of Hatch, James & Dodge, Salt Lake City, UT, for Plaintiff-Appellant and Cross-Appellee.

Mary Anne Q. Wood (Kathryn O. Balmforth of Wood Crapo LLC with her on the briefs for Defendant-Appellee and Cross-Appellant Deseret Book Company, and Kent B. Linebaugh of Jones, Waldo, Holbrook & McDonough with her on the briefs for Defendant-Appellee and Cross-Appellant Dean Hughes) of Wood Crapo LLC, Salt Lake City, UT, for Defendants-Appellees and Cross-Appellants.

Before KELLY, Circuit Judge, BRORBY, Senior Circuit Judge, and MURPHY, Circuit Judge.

BRORBY, Senior Circuit Judge.

I. Introduction

Dr. Gene S. Jacobsen was a prisoner of war in the Philippines and Japan during World War II. After returning from military service, Dr. Jacobsen wrote his personal memoir entitled Who Refused to Die. In gripping detail, Who Refused to Die recounts Dr. Jacobsen's survival of the Bataan Death March and subsequent years of imprisonment and torture in various work camps.

In 1997, Deseret Book Company ("Deseret Book") published the first of a five-volume series written by Dr. Dean Hughes entitled Children of the Promise.¹ The series is a fictional work written primarily for members of the Church of Jesus Christ of Latter-day Saints. It portrays a Latter-day Saint family's life during World War II. The story of Wally Thomas, one of the family's sons, closely follows Dr. Jacobsen's experiences as related in Who Refused to Die.

In 1999, Dr. Jacobsen filed a complaint against Dr. Hughes and Deseret Book seeking an injunction and damages for copyright infringement under 17 U.S.C. §§ 106 and 501. After nearly a year of discovery, Deseret Book filed a motion asking the district court to dismiss the complaint for failure to state a claim pursuant to Federal Rule of Civil Procedure 12(b)(6) and award Deseret Book attorney fees. Dr. Hughes joined Deseret Book's Rule 12(b)(6) motion and filed a motion for summary judgment on several affirmative defenses. The district court granted the Rule 12(b)(6) motion, granted summary judgment on the affirmative defense of laches, and denied the request for attorney fees.

On appeal, Dr. Jacobsen challenges the district court's dismissal of his complaint pursuant to Fed.R.Civ.P. 12(b)(6) as well as the court's granting summary judgment on the affirmative defense of laches. Dr. Jacobsen also appeals the district court's refusal to strike defendants' expert reports or allow Dr. Jacobsen additional time to designate expert witnesses. Dr. Hughes and Deseret Book filed a cross-appeal seeking attorney fees. We exercise jurisdiction under 28 U.S.C. § 1291 and reverse the 12(b)(6) dismissal, the grant of summary judgment on laches, and the refusal to strike the expert reports. Both Dr. Jacobsen's request for additional time to designate experts and Dr. Hughes' and Deseret Book's request for attorney fees are moot.

II. Motion to Dismiss

Dr. Jacobsen argues the district court erred in granting Dr. Hughes' and Deseret Books' motion to dismiss.² "We review a dismissal under Rule 12(b)(6) de novo." Wark v. United States, 269 F.3d 1185, 1190 (10th Cir.2001). Our "`function on a Rule 12(b)(6) motion is not to weigh potential evidence that the parties might present at trial, but to assess whether the plaintiff's complaint alone is legally sufficient to state a claim for which relief may be granted.'" Sutton v. Utah State Sch. for the Deaf & Blind, 173 F.3d 1226, 1236 (10th Cir.1999) (quoting Miller v. Glanz, 948 F.2d 1562, 1565 (10th Cir.1991)).

In addition to the complaint, the district court may consider documents referred to in the complaint if the documents are central to the plaintiff's claim and the parties do not dispute the documents' authenticity. See GFF Corp. v. Associated Wholesale Grocers, Inc., 130 F.3d 1381, 1384 (10th Cir.1997). Because Dr. Jacobsen's complaint referred to Who Refused to Die and the Children of the Promise series, and all the parties invited the district court to consider these works, the district court properly considered the work in ruling on the 12(b)(6) motion.³ See Lewis v. Kroger Co., 109 F.Supp. 484, at 486 (S.D.W.Va.1952) (considering original and allegedly copied material in ruling on 12(b)(6) motion). When a district court considers the original work and the allegedly copyrighted work in deciding a 12(b)(6) motion, the legal effect of the works are determined by the works themselves rather than by allegations in the complaint. See Droppleman v. Horsley, 372 F.2d 249, 250 (10th Cir.1967) (holding the legal effect of an incorporated document considered on a motion to dismiss "`is to be determined by [the document's] terms rather than by the allegations of the pleader'" in the complaint) (quoting Zeligson v. Hartman-Blair, Inc., 126 F.2d 595, 597 (10th Cir.1942)).

We cannot affirm the dismissal for failure to state a claim unless, after considering the complaint, Who Refused to Die, and the Children of the Promise series⁴ in the light most favorable to Dr. Jacobsen, it appears beyond doubt Dr. Jacobsen can prove no set of facts in support of his claim that would entitle him to relief. Stidham v. Peace Officer Standards & Training, 265 F.3d 1144, 1149 (10th Cir.2001). To establish copyright infringement, Dr. Jacobsen must prove "(1) ownership of a valid copyright and (2) `copying of constituent elements of the work that are original.'" TransWestern Publ'g Co., v. Multimedia Mktg. Assocs., 133 F.3d 773, 775 (10th Cir.1998) (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991)). The complaint clearly alleges Dr. Jacobsen has a federally registered copyright for Who Refused to Die. Thus, we need only determine whether the complaint and incorporated documents are sufficient to allege Dr. Hughes and Deseret Book copied Who Refused to Die.

Whether Dr. Hughes and Deseret Book copied Who Refused to Die "involves two distinct inquiries: first, whether [Dr. Hughes], as a factual matter, copied [Dr. Jacobsen's] work, and second, whether, as a mixed issue of fact and law, those elements that were copied were protected." Country Kids `N City Slicks, Inc. v. Sheen, 77 F.3d 1280, 1284 (10th Cir.1996). After reviewing the complaint and incorporated documents, we are satisfied Dr. Jacobsen could present evidence showing Dr. Hughes copied many of the experiences Dr. Jacobsen recorded in Who Refused to Die. The difficulty in this case arises in determining whether Dr. Hughes copied only unprotected facts or instead impermissibly copied Dr. Jacobsen's original expression.

It is well settled "no author may copyright facts or ideas." Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 547, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985). Thus, the copyright of a nonfiction work protects only "those aspects of the work — termed `expression' — that display the stamp of the author's originality." Id. See also Feist, 499 U.S. at 348, 111 S.Ct. 1282 ("[C]opyright protection may extend only to those components of a work that are original to the author."). "[A] copyright does not prevent subsequent users from copying from a prior author's work those constituent elements that are not original — for example ... facts, or materials in the public domain — as long as such use does not unfairly appropriate the author's original contributions." Harper & Row, 471 U.S. at 548, 105 S.Ct. 2218 (quotation marks and citations omitted).

In order to prove copying of legally protectible material, a plaintiff must typically show substantial similarity between legally protectible elements of the original work and the allegedly infringing work. Country Kids `N City Slicks, 77 F.3d at 1284. "This is primarily a qualitative rather than a purely quantitative analysis, and must be performed on a case-by-case basis." Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 839 (10 Cir.1993) (citation and footnote omitted).<sup>5</sup> To decide whether two works are substantially similar we ask "`whether the accused work is so similar to the plaintiff's work that an ordinary reasonable person would conclude that the defendant unlawfully appropriated the plaintiff's protectible expression by taking material of substance and value.'" Country Kids `N City Slicks, 77 F.3d at 1288 (quoting Atari, Inc. v. North Am. Philips Consumer Elecs. Corp., 672 F.2d 607, 614 (7th Cir.1982)). Determining whether there is substantial similarity in cases involving fact-based works is particularly difficult.

[T]he measure of how substantial a "substantial similarity" must be may vary according to circumstances. For many copyrights represent significant creative effort, and are therefore reasonably robust, whereas others reflect only scant creativity; the Supreme Court labels the latter "thin." It would seem to follow analytically that more similarity is required when less protectible matter is at issue. Thus, if substantial similarity is the normal measure required to demonstrate infringement, "supersubstantial" similarity must pertain when dealing with "thin" works.

4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.03[A], at 13-28 (2000) (hereinafter Nimmer). See also TransWestern, 133 F.3d at 776 (relying on Nimmer's "supersubstantial" similarity analysis). Because "[n]o easy rule of thumb can be stated as to the quantum of fragmented literal similarity permitted without crossing the line of substantial similarity," whether works are substantially similar is "a classic jury question." 4 Nimmer, supra, § 13.03[A][2], at 13-46 and n. 96 (2001). Cf. King of the Mountain...