President & Fellows of Harvard Coll. v. Elmore

• Decision Date: 22 April 2016
• Docket Number: No. CIV 15–00472–RB/KK,CIV 15–00472–RB/KK
• Citation: 222 F.Supp.3d 1050
• Parties: PRESIDENT AND FELLOWS OF HARVARD COLLEGE, Plaintiff, v. Steve ELMORE, Steve Elmore Photography, Inc., d/b/a Steve Elmore Indian Art, and d/b/a Spirit Bird Press, Defendants.
• Court: U.S. District Court — District of New Mexico

222 F.Supp.3d 1050

PRESIDENT AND FELLOWS OF HARVARD COLLEGE, Plaintiff,

v.Steve ELMORE, Steve Elmore Photography, Inc., d/b/a Steve Elmore Indian Art, and d/b/a Spirit Bird Press, Defendants.

No. CIV 15–00472–RB/KK

United States District Court, D. New Mexico.

Signed April 22, 2016

Benjamin W. Allison, Breanna Patricia Houghton, Justin W. Miller, Bardacke Allison LLP, Santa Fe, NM, for Plaintiff.

Christopher J. DeLara, Jonathan A. Garcia, Guebert Bruckner P.C., Albuquerque, NM, for Defendants.

MEMORANDUM OPINION AND ORDER

ROBERT C. BRACK, UNITED STATES DISTRICT JUDGE

THIS MATTER is before the Court on Plaintiff's Motion to Dismiss Defendant Steve Elmore's Counterclaims (Doc. 37). Plaintiff President and Fellows of Harvard College (Harvard) and Steve Elmore contracted to produce and publish a book, but Harvard declined Mr. Elmore's manuscript. (Docs. 22–1; 22–2.) After Mr. Elmore published the book on his own, Harvard sued, alleging copyright infringement, breach of contract, and false designation of origin. (Doc. 1; see also Doc. 17 (amending the complaint).) Mr. Elmore filed a counterclaim, requesting declaratory judgment and alleging breach of contract, breach of covenant of good faith and fair dealing, tortious interference with contractual relations, tortious interference with prospective contractual relations, conversion, misappropriation of intellectual property, prima facie tort, unjust enrichment, and punitive damages. (Doc. 22 at 11–26 (Countercl.).) Harvard moved to dismiss all claims save the request for declaratory judgment. (Doc 37.) Having reviewed the parties' submissions and arguments, the Court GRANTS Plaintiff's Motion to Dismiss Defendant Steve Elmore's Counterclaims in part and DISMISSES with prejudice Mr. Elmore's claims for tortious interference with prospective contractual relations, misappropriation of intellectual property, prima facie tort, unjust enrichment, and punitive damages relating to these claims. The Court DENIES Harvard's motion to dismiss as to Mr. Elmore's claims for breach of contract regarding reimbursement of travel expenses, breach of covenant of good faith regarding the contract with another author, tortious interference with existing contractual relations, conversion regarding Harvard's actions with Amazon.com, Inc. (Amazon), and punitive damages relating to these claims.

I. BACKGROUND

This case began with an invitation and a proposal. In 2009, the curator of collections at the Peabody Museum of Archaeology and Ethnology (the Museum) invited Mr. Elmore to submit a book proposal to Peabody Museum Press (the Press). (Countercl. ¶ 8.) Mr. Elmore submitted his proposal to the Press editor, and it was "unanimously accepted by the board with enthusiasm." (Id. ) Mr. Elmore and Harvard contracted to publish the book, provisionally titled In Search of Nampeyo: the Apprenticeship of a Great Hopi Artist.

(Doc. 22–1 at 1.) The book would discuss "selected pieces of pottery" in Harvard's Keam collection, held by the Museum. (Id. )

In the contract, attached to Mr. Elmore's counterclaim, the parties agreed the manuscript would be a "Work Made for Hire." (Doc. 22–1 at 2.) Mr. Elmore agreed to "write and deliver to [the Press] ... a complete manuscript (... including front matter, text, bibliographic references, copies of illustrations, and figure captions)" by March 31, 2012. (Id. at 1.) Mr. Elmore was to "work in consultation with the Museum and the Press to select objects from the collection for illustration in the volume." (Id. ) The Museum was to "handle all photography and produce any other needed artwork for the volume" and to "manage editorial, design, and production work for the volume...." (Id. ) "If Mr. Elmore fail[ed] to submit the manuscript by [March 31, 2012], the Museum ha[d] the right to refuse publication of the work[,]" but, the contract could also "be extended by mutual written agreement of the two parties." (Id. at 2.) The Museum agreed "to provide Mr. Elmore with up to $1,500.00 in expense reimbursement for a research visit to the Museum" and agreed to pay Mr. Elmore "$1,000.00 upon completion and acceptance of the manuscript following peer review." (Id. )

Mr. Elmore submitted his first version of the manuscript to Harvard on May 10, 2012. (Countercl. ¶ 10.) In the manuscript, Mr. Elmore concluded that "many" of the artifacts in the Keam collection were created by the Hopi artist Nampeyo. (Id. ) The Press editor and three anonymous academic readers reviewed the manuscript. (Id. at ¶ 12.) Although one recommended accepting it without revision, the second reviewer recommended accepting it with revisions, and the third reviewer recommended rejecting it. (Id. ) The Press editor instructed Mr. Elmore to "write lengthy responses to the questions and criticisms of the three anonymous reviewers." (Id. at ¶ 13.) After the Press editor reviewed Mr. Elmore's responses to the reviewers, she and the Press Editorial Advisory Board recommended that Mr. Elmore rewrite the manuscript as a full academic paper for Harvard, and "Harvard promised a second contract, which was never provided to Mr. Elmore." (Id. ) According to the counterclaim, someone from Harvard and "the Peabody" told Mr. Elmore that the manuscript was "excellent academically, but too detailed for the regular Peabody Museum series...." (Id. at ¶ 11.)

Absent the promised contract, Mr. Elmore submitted a second version of the manuscript in November 2013. (Countercl. ¶ 14.) This version "contained over 80 additional pages explaining more of Mr. Elmore's methodology and linking his original research to earlier works of art history." (Id. at ¶ 25.) Mr. Elmore alleges that "[o]ver a period of several months, [the Press editor] continually represented to Mr. Elmore that she fully expected Mr. Elmore's manuscript to be published." (Id. at ¶ 15.)

In January 2014, however, Harvard declined to publish the manuscript. (Doc. 22–2.) In a letter to Mr. Elmore, the Press editor informed Mr. Elmore that The Press Editorial Advisory Board reviewed the revised manuscript and "concluded that the project is not a fit with [their] editorial and publishing priorities and standards." (Id. ) It further quoted a board member who stated, "We are an academic press, and this is not an academic book." (Id. ) In the letter, Harvard "return[ed] ... all rights in the manuscript ..., including all versions of the manuscript submitted to the Peabody Museum Press" and "recommend[ed] that [Mr. Elmore] find a magazine or trade publisher" to publish the manuscript. (Id. ) The Press editor noted she "would support publication" with the American Indian Art Magazine. (Id. ) Mr. Elmore later published his manuscript, now entitled In Search of Nampeyo: The Early Years, 1875–1892 , through an independent publisher. (Countercl. ¶ 20.) According to Mr. Elmore, Harvard "benefitted from the praise the book has received [,]" especially since Mr. Elmore thanked Harvard for maintaining the collection of artifacts and assisting with Mr. Elmore's research. (Id. )

In December 2014, an author approached Mr. Elmore, claiming she had "secur[ed] writing projects with Harvard and the Peabody on Nampeyo's ceramics in the Keam collection" and interrogated Mr. Elmore "specifically about the information in his manuscript...." (Countercl. ¶ 22.) Based on this information, Mr. Elmore alleges that "Harvard has contracted with [another author] ... for the publication of another book about Nampeyo and the Keam Collection, which relies on the original research conducted by Mr. Elmore, including but not limited to the results drawn therefrom, and attribute it as their own." (Id. at ¶ 24.) Specifically, Mr. Elmore alleges that Harvard "failed to advise Mr. Elmore it had no intention of publishing his work" in order to extract additional information on his methodology and subsequently contract with the other author to "misappropriate Mr. Elmore's work...." (Id. at ¶¶ 25–26.)

Mr. Elmore further alleges that Harvard claims "ownership of the contents of the manuscript based on its interpretation of the original contract and the letter returning rights to Mr. Elmore. (Countercl. ¶¶ 27, 80.) Specifically, Harvard claimed Mr. Elmore's Book "as their own" and caused Amazon to remove it from their website, even though Mr. Elmore had a contract with Amazon for sale and distribution of his book. (Id. at ¶¶ 32, 47.) Due to Harvard's claims, Mr. Elmore was also "forced" to delay a contract with a public relations firm, which would have included the release of a media kit on the book to 600 media outlets. (Id. at ¶ 32.)

In June 2015, Harvard sued Mr. Elmore, alleging copyright infringement, breach of contract, and false designation of origin (Doc. 1.) Mr. Elmore filed a counterclaim, alleging breach of contract, breach of covenant of good faith and fair dealing, tortious interference with contractual relations, tortious interference with prospective contractual relations, conversion, misappropriation of intellectual property, prima facie tort, unjust enrichment, declaratory judgment, and punitive damages. (Countercl.)

Mr. Elmore's claims for Count I, breach of contract, Count II, good faith and fair dealing, Count III, tortious interference with existing contractual relations, and Count V, conversion, all survive Harvard's motion to dismiss. Conversely, the Court dismisses Count IV, tortious interference of prospective contractual relations, Count VI, misappropriation of intellectual property, Count VII, prima facie tort, and Count VIII, unjust enrichment. The Court also dismisses Count X to the extent that it alleges entitlement to punitive damages associated with Courts IV, VI, VII, and VIII.

II. LEGAL STANDARD

A complaint may be dismissed for "failure to state a claim upon which relief can be granted." Fed. R. Civ. P. 12(b)(6). "Although for the purposes of a motion to dismiss we must take all of the factual allegations in the complaint as true, we ‘are not bound to accept as true a legal conclusion couched as a...