Advance Magazine Publishers, Inc. v. Leach, No. CIV.A. DKC 2006-0522.

• Decision Date: 30 November 2006
• Docket Number: No. CIV.A. DKC 2006-0522.
• Citation: 466 F.Supp.2d 628
• Parties: ADVANCE MAGAZINE PUBLISHERS INC. v. David LEACH
• Court: U.S. District Court — District of Maryland

466 F.Supp.2d 628

ADVANCE MAGAZINE PUBLISHERS INC. v. David LEACH

No. CIV.A. DKC 2006-0522.

United States District Court, D. Maryland.

November 30, 2006.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

David Edward Mills, Dow Lohnes and Albertson PLLC, Washington, DC, for Advance Magazine Publishers Inc.

David Leach, T/A Disruptive Publishing, Rockville, MD, pro se.

MEMORANDUM OPINION

CHASANOW, District Judge.

Presently pending and ready for resolution in this copyright and trademark infringement case are (1) Plaintiffs motion for partial summary judgment on count I, (2) Defendant's motion for partial summary judgment on counts III, IV, and V, (3) Defendant's motion to extend time for discovery and to extend time to file, (4) Defendant's motion to dismiss, and (5) Defendant's motion for a writ of mandamus. The issues are fully briefed and the court now rules pursuant to Local Rule 105.6, no hearing being deemed necessary. For the reasons that follow, Plaintiffs motion for partial summary judgment will be granted. Defendant's motion to extend time to file will be denied as moot. Defendant's motions for partial summary judgment, to extend time for discovery, to dismiss, and for a writ of mandamus will be denied.

I. Factual Background

All facts are uncontroverted. Plaintiff Advance Magazine Publishers, Inc., is the owner on record with the United States Copyright Office of more than 500 booklength stories, published in the 1930s and 1940s, in the pulp fiction, serial magazines, The Shadow, Doc Savage, and The Avenger, as well as in similarly titled magazines ("publications").¹ (Paper 1, Exs. A, D, F; paper 8, Birenz Decl. ¶¶ 4, 5).

Defendant David Leach, d/b/a David Moynihan, d/b/a Disruptive Publishing, operates two websites, Blackmask.com and Smartset.net, through which he displays or offers for distribution electronic copies and reprints of Plaintiff's publications. (Paper 8, Birenz Decl. ¶ 13). Defendant operates his business by scanning literary works into electronic form and making them available to the public in a variety of formats, including MS-Reader, Adobe Acrobat, and Rocket eBook. (Paper 5 at 4). Defendant's customers may download advertiser-supported electronic copies of works directly from his websites, purchase by mail CD-ROMs and DVD-ROMs containing compilations of works, or purchase through online booksellers such as Amazon.com and Barnesandnoble.com, reprints of literary works made by Defendant. Defendant began selling copies of Plaintiff's publications in 2000. (Paper 5 at 5; paper 8 at 5-6).

Plaintiff submitted extensive exhibits documenting its chain of title to the publications, which will be summarized briefly. Between 1931 and 1949, Street & Smith published The Shadow, Doc Savage, and The Avenger as works for hire written by Walter Gibson (pen name Maxwell Grant), Lester Dent, and Paul Ernst (pen name Kenneth Robeson), respectively. (Paper 1 at ¶¶ 15, 26, 35; paper 8, Birenz Decl. ¶ 4). On December 19, 1961, Street & Smith merged into Condé Nast, transferring all "estate, property, rights, privileges, and Franchises." (Paper 1 at ¶ 44; paper 8, Birenz Decl. ¶ 8). The merger document was filed with the United States Patent and Trademark Office. On September 22, 1988, Condé Nast merged into Plaintiff. At the time of the merger, Plaintiff acquired all rights previously owned by Condé Nast. (Paper 8, Birenz Decl. ¶¶ 8, 9). Plaintiff has registered additional copyrighted materials and trademarks related to the publications and has properly renewed all its registrations. (Paper 1, Exs. J, K, L).

II. Procedural Background

On February 28, 2006, Plaintiff filed a six count complaint against Defendant alleging: count I, copyright infringement under the Copyright Act of 1976, 17 U.S.C. §§ 106, 501, et seq., ("Copyright Act"); count II, copyright infringement under the Digital Millennium Copyright Act, 17 U.S.C. § 1202, ("DMCA"); count III, trademark infringement under the Lanham Act, 15 U.S.C. § 1114; count IV, trademark infringement and unfair competition under the Lanham Act, 15 U.S.C. § 1125(a); count V, trademark dilution under the Lanham Act, 15 U.S.C. § 1125(c); and count VI, trademark infringement under Maryland common law. (Paper 1).

On March 22, 2006, Defendant filed an answer defending his actions by alleging that Plaintiff is not the true owner of the copyrights at issue because Defendant had acquired the rights through adverse possession.² (Paper 5 at 1). The answer also included a copy of a letter Defendant wrote to the United States Copyright Office, requesting a recordation of transfer of ownership of 506 of Plaintiffs publications based on the doctrine of adverse possession. (Paper 5, Ex. 1). The copyright office rejected Defendant's petition because he did not pay the proper fee.

On May 3, 2006, pursuant to the DMCA, Plaintiff sent a notice to the Internet service provider hosting Defendant's websites, PEER 1 Network, informing PEER 1 that Defendant's websites contained infringing copies of Plaintiffs publications. The following day, PEER 1 disabled access to Defendant's websites.

On May 4, 2006, Defendant resubmitted his letter to the copyright office claiming a transfer of rights through adverse possession. On June 28, 2006, the copyright office responded to Defendant's letter, indicating that the copyright office does not consider the doctrine of adverse possession applicable to intellectual property. (Paper 20, Ex. 1).

Plaintiff seeks partial summary judgment on its copyright infringement claim (count I). (Paper 8). Defendant seeks partial summary judgment on counts III, IV, and V. (Paper 28). Defendant also filed an untitled motion, (paper 34). While it is not clear precisely what relief is sought by Paper 34, the court will construe it as a request to extend the period for discovery and to extend the time for Defendant to file a motion to dismiss. Defendant additionally filed a separate motion to dismiss (paper 38) and a motion requesting a writ of mandamus ordering PEER 1 to restore access to the server hosting Defendant's websites for a limited period to allow Defendant to remove the content (paper 39).

III. Motions for Summary Judgment

A. Standard of Review

It is well established that a motion for summary judgment will be granted only if there exists no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. See Fed.R.Civ.P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). In other words, if there clearly exist factual issues "that properly can be resolved only by a finder of fact because they may reasonably be resolved in favor of either party," then summary judgment is inappropriate. Anderson, 477 U.S. at 250, 106 S.Ct. 2505; see also Pulliam Inv. Co. v. Cameo Props., 810 F.2d 1282, 1286 (4th Cir.1987); Morrison v. Nissan Motor Co., 601 F.2d 139, 141 (4th Cir.1979). The moving party bears the burden of showing that there is no genuine issue as to any material fact and that he is entitled to judgment as a matter of law. See Fed.R.Civ.P. 56(c); Catawba Indian Tribe of S.C. v. South Carolina, 978 F.2d 1334, 1339 (4th Cir.1992), cert. denied, 507 U.S. 972, 113 S.Ct. 1415, 122 L.Ed.2d 785 (1993).

When ruling on a motion for summary judgment, the court must construe the facts alleged in the light most favorable to the party opposing the motion. See United States v. Diebold, 369 U.S. 654, 655, 82 S.Ct. 993, 8 L.Ed.2d 176 (1962); Gill v. Rollins Protective Servs. Co., 773 F.2d 592, 595 (4th Cir.1985). A party who bears the burden of proof on a particular claim must factually support each element of his or her claim. "[A] complete failure of proof concerning an essential element ... necessarily renders all other facts immaterial." Celotex Corp., 477 U.S. at 323, 106 S.Ct. 2548. Thus, on those issues on which the nonmoving party will have the burden of proof, it is his or her responsibility to confront the motion for summary judgment with an affidavit or other similar evidence in order to show the existence of a genuine issue for trial. See Anderson, 477 U.S. at 256, 106 S.Ct. 2505; Celotex Corp., 477 U.S. at 324, 106 S.Ct. 2548. However, "[a] mere scintilla of evidence in support of the nonmovant's position will not defeat a motion for summary judgment." Detrick v. Panalpina, Inc., 108 F.3d 529, 536 (4th Cir.), cert. denied, 522 U.S. 810, 118 S.Ct. 52, 139 L.Ed.2d 17 (1997). There must be "sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party. If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Anderson, 477 U.S. at 249-50, 106 S.Ct. 2505 (citations omitted).

B. Copyright Claim (count I)

In its motion for partial summary judgment on count I, Plaintiff requests that the court enter a judgment of liability against Defendant for copyright infringement, with the amount of damages, costs, and attorney fees to be determined separately. Plaintiff seeks to enjoin Defendant immediately and permanently from reproducing, displaying, or distributing any copies of Plaintiff's publications. Plaintiff further requests that the court order Defendant to provide to Plaintiffs attorney all infringing copies of its publications in his possession, custody, or control, and all publications used to make the infringing copies that are in his possession, custody, or control. (Paper 8 at 3-4).

Plaintiff contends that by scanning into electronic form, displaying, and selling or' otherwise making available to the public, more than 500 of Plaintiffs publications, Defendant has infringed its copyrights in those publications under 17 U.S.C. § 501(a).

"[T]he Copyright Act grants the copyright holder `exclusive' rights to use and to authorize the use of his work in five qualified ways," namely, (1) to...