Costello, Erdlen & Co. v. Winslow, King, Richards & Co., Civ. A. No. 89-814-T.

• Decision Date: 27 April 1992
• Docket Number: Civ. A. No. 89-814-T.
• Citation: 797 F. Supp. 1054
• Parties: COSTELLO, ERDLEN & CO., INC., Plaintiff, v. WINSLOW, KING, RICHARDS & CO., et al., Defendants.
• Court: U.S. District Court — District of Massachusetts

797 F. Supp. 1054

COSTELLO, ERDLEN & CO., INC., Plaintiff, v. WINSLOW, KING, RICHARDS & CO., et al., Defendants.

Civ. A. No. 89-814-T.

United States District Court, D. Massachusetts.

April 27, 1992.

COPYRIGHT MATERIAL OMITTED

Peter A. Biagetti, Kenneth M. Bello, Mintz, Levin, Cohn, Ferris, Glovsky & Popeo, Boston, Mass., for Costello, Erdlen & Co., Inc.

Clarence V. LaBonte, Jr., Russian & LaBonte, Lexington, Mass., for Winslow, King, Richards & Co., and Bishop & Co., Inc.

Esther J. Horwich, Boston, Mass., for William F. Winslow.

MEMORANDUM AND ORDER

TAURO, Chief Judge.

Plaintiff, Costello, Erdlen & Co. ("Costello"), brings this action against defendants Winslow, King, Richards and Co. ("WKR") and William Winslow ("Winslow") for alleged copyright infringement of a 91-page work entitled "Job Hunting Guide."¹ Specifically, plaintiff claims that it provides outplacement counseling services to former employees of client companies. Defendant Winslow worked for Costello from August 1983 to February 1985. Winslow then worked for WKR from July 1986 to November 1988, providing outplacement services. Plaintiff claims that, when Winslow left Costello, he took with him the Job Hunting Guide, and, while at WKR, created a document called "Career Search Guide." Plaintiff claims the Career Search Guide contains passages which are identical or almost identical to ones found in the Job Hunting Guide.

Plaintiff has filed a Motion for Partial Summary Judgment. Other motions are also pending in this case.

A. Plaintiff's Mtn for Partial Summary Judgment

To prevail on a claim of copyright infringement, plaintiff must show (1) ownership of a valid copyright and (2) copying of the protected work by the alleged infringer. Concrete Machinery Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 605 (1st Cir.1988). Plaintiff filed a Motion for Partial Summary Judgment as to the second prong — i.e., whether defendant had copied the protected work. Plaintiff may establish copying by showing (1) access to the copyrighted work and (2) substantial similarity between the copyrighted work and WKR's work. Id. at 606.

Magistrate Judge Bowler held a hearing on this motion and issued an opinion recommending that the court allow the motion as to access, but deny it as to substantial similarity.

Defendants object to the finding of "access." Magistrate Bowler found, however, that defendant Winslow had worked at Costello, and that, when he left in 1984, he took with him the Job Hunting Guide that was produced in 1982. Costello claimed, and Magistrate Bowler agreed, that the version that defendant allegedly copied, the 1987 guide, was virtually identical to the 1982 guide. Magistrate Bowler concluded, therefore, that Winslow, and thus WKR, had access to the alleged copyrighted material.

After reviewing the record, see Rules for United States Magistrates in the United States District Court for the District of Massachusetts Rule 3.(b) (hereinafter "Magistrate Rule"), the court agrees with this determination and hereby ACCEPTS and ADOPTS the recommendation of the Magistrate Judge.

B. Other Motions

The court hereby ACCEPTS and ADOPTS the Report and Recommendation of the Magistrate Judge on Plaintiff's Motion for Preliminary Injunction, as defendant has failed to file timely objections. See Magistrate Rule 2(b).

Plaintiff's unopposed Motion to File Amended Complaint is ALLOWED.

Defendants' Motion to File Amended Answer and Counterclaim is DENIED. See Quaker State Oil Refining Corp. v. Garrity Oil Co., 884 F.2d 1510, 1517 (1st Cir. 1989) ("Parties seeking the benefit of the rule's liberality have an obligation to exercise due diligence; unseemly delay, in combination with other factors, may warrant denial of suggested amendment."); Andrews v. Bechtel Power Corp., 780 F.2d 124, 138 (1st Cir.1985) (While leave to amend "shall be freely given when justice so requires," it may be denied "in the face of extraordinarily long and essentially unexplained delay."), cert. denied, 476 U.S. 1172, 106 S.Ct. 2896, 90 L.Ed.2d 983 (1986).

Defendants' Motion for Summary Judgment is DENIED.

Plaintiff's Motions to Stay and to Strike Motion for Summary Judgment are, therefore, MOOT.

It is so ordered.

REPORT AND RECOMMENDATION RE: PLAINTIFF'S MOTION FOR PARTIAL SUMMARY JUDGMENT (DOCKET ENTRY # 64) and PLAINTIFF COSTELLO, ERDLEN & COMPANY, INC.'S MOTION FOR PRELIMINARY INJUNCTION AND REQUEST FOR HEARING (DOCKET ENTRY # 81)

October 9, 1991

BOWLER, United States Magistrate Judge.

The plaintiff, Costello, Erdlen & Company, Inc. ("Costello"), filed this action against the defendants, Winslow, King, Richards & Company ("WKR") and William F. Winslow ("Winslow") for copyright infringement, conversion and violation of Mass.Gen.L. ch. 93A. Costello seeks partial summary judgment pursuant to Rule 56(d), Fed.R.Civ.P., against WKR under its infringement claim¹.

Costello seeks entry of partial summary judgment of the following material facts: (1) that WKR had access to Costello's job guide; and (2) that WKR's job guide² is substantially similar to that of Costello's. (Docket Entry # 64). Defendant opposes establishing the above material facts as a matter of law because: (1) as a preliminary matter, Costello must show that its job guide is "protected"; and (2) material questions of fact exist as to access³ and substantial similarity. (Docket Entry # 74).

Costello also moves for a preliminary injunction enjoining WKR, in part, from diverting assets to Bishop & Company, Inc., a company WKR formed in May 1990 to market outplacement services. (Docket Entries ## 81 & 82). WKR opposes the motion. (Docket Entry # 84).

On August 15, 1991, this court conducted a hearing and took the motions under advisement in order to issue written findings. This court will now address, respectively, the motion for partial summary judgment (Docket Entry # 64) and the motion for a preliminary injunction (Docket Entry # 81).

I. PLAINTIFF'S MOTION FOR PARTIAL MOTION SUMMARY JUDGMENT (DOCKET ENTRY # 64)

Background

Costello, a Massachusetts corporation, provides outplacement counseling services to former employees of client companies. Winslow, a former Costello employee⁴, worked for WKR from July 1986 to November 1988 by providing outplacement services. Allegedly in 1986 and thereafter, WKR used a job hunting guide, prepared by Winslow, that purportedly infringes Costello's copyrights⁵.

On April 7, 1988, the Copyright Office issued certificates to three of Costello's job hunting guides, created by Costello in 1982, 1985 and 1987⁶. (Docket Entry # 74, ex. E). In support of the partial summary judgment motion, Costello refers this court to the job hunting guide contained in exhibit E. (Docket Entry # 64, ex. E)⁷. By affidavit, J. Paul Costello, president of Costello, Erdlen & Company, Inc., states that exhibit E is a true copy of the job hunting guide used by Costello in 1985 at the time Winslow left the company. (Docket Entry # 64, ex. E). Costello maintains that the 1982, 1985 and 1987 guides, each respectively sixty-two, sixty-nine and sixty-two pages in length, differ only cosmetically, such as in the typeface and cover page.

A comparison of exhibit E with the 1982 guide reveals identical wording with minor differences that include: (1) different offices listed on the cover pages; (2) different quality printing, resulting in the black out of words in the 1982 guide; (3) the planning, employment process and job sources sections in the 1982 guide contain handwritten notations; and (4) page fifty-eight is missing from exhibit E. Exhibit E is therefore a later version of the 1982 guide⁸. Winslow worked at Costello after the creation of the 1982 guide and prior to the creation of its revised version, exhibit E.

Mr. Costello states, by affidavit, that Don Sweet, a former employee of Costello, Erdlen & Company, Inc., created an initial version of the guide "the rights of which were to be given to Costello, Erdlen & Company, Inc." (Docket Entry # 64, ex. A; Docket Entry # 74, ex. C). Mr. Costello states that, over time, various employees made "cosmetic changes," such as typeface and grammar, to the "basic manual." (Docket Entry # 64, ex. C).

On the other hand, John D. Erdlen states, by affidavit, that he wrote 98 percent of the original Costello guide "in the early '70s." The guide referred to by Mr. Erdlen began "as a six-page handout" and, by the "late 1970s", had expanded to "50 or 60 pages". (Docket Entry # 74, ex. F).

While working at Costello, Winslow used an unidentified Costello job hunting guide. He further states that, during the course of conducting outplacements, he distributed thousands of these Costello guides. (Docket Entry # 74, ex. D). On February 22, 1985, when Winslow left the company, he took with him a ninety-one page job hunting guide, prepared and given to him by Mr. Sweet, Winslow's supervisor. The guide did not have a copyright notice; nor was Winslow under the impression that any of the guides circulating in the office had copyright protection. (Docket Entry # 64, ex. C; Docket Entry # 74, ex. A).

From February 22, 1985 to "mid" 1986, Winslow provided outplacement services as a sole proprietor under the name of W. Winslow & Associates. During this period, Winslow prepared a seventy-seven page document entitled The New Job Hunting Handbook⁹. (Docket Entry # 64, ex. H; Docket Entry # 74, ex. A). When Winslow began working at WKR, he brought a guide with him, according to Charles Richards, a WKR founder who succeeded Winslow as president in 1988. (Docket Entry # 64, ex. D).

In preparing the seventy-seven page guide, Winslow consulted the following sources: The Hidden Job Market; The Hidden Resume; The Complete Job Search Handbook; The Complete Resume Guide; Winning Resumes; Job Resumes; Your Career; Resumes and Beyond and How to Write a Resume to Get the Job You Really Want. (Docket Entry # 74, ex. A). Winslow does not specifically recall using the ninety-one page...