Boothroyd Dewhurst, Inc. v. Poli

• Citation: 783 F. Supp. 670
• Decision Date: 12 June 1991
• Docket Number: Civ. A. No. 89-1650-F.
• Parties: BOOTHROYD DEWHURST, INC., Plaintiff, v. Corrado POLI, Defendant.
• Court: U.S. District Court — District of Massachusetts

783 F. Supp. 670

BOOTHROYD DEWHURST, INC., Plaintiff, v. Corrado POLI, Defendant.

Civ. A. No. 89-1650-F.

United States District Court, D. Massachusetts.

June 12, 1991.

John L. Welch, Wolf, Greenfield & Sacks, P.C., Boston, Mass., for plaintiff.

John J. Dempsey, Chapin, Neal & Dempsey, P.C., Springfield, Mass., John C. Linderman, McCormick, Paulding & Huber, Hartford, Conn., for defendant.

MEMORANDUM AND ORDER

FREEDMAN, Chief Judge.

I. INTRODUCTION

Plaintiff Boothroyd Dewhurst, Inc. ("BDI"), a Rhode Island corporation which is the successor to a Massachusetts corporation, Boothroyd & Dewhurst, Inc. ("B & D, Inc."), brings suit against Professor Corrado Poli ("Poli"), charging in a four-count complaint that Poli's activities have violated the Copyright Act, 17 U.S.C. §§ 101 et seq. (count one), section 43(a) of the Lanham Act, 15 U.S.C. § 1125 (count two), the Massachusetts Consumer Protection Act, Mass.Gen.Laws ch. 93A ("chapter 93A") (count three) and constitute unfair competition under the common law of Massachusetts (count four). Defendant has filed counterclaims, alleging that plaintiff — through the actions of its principals, Professor Geoffrey Boothroyd ("Boothroyd") and Professor Peter Dewhurst ("Dewhurst") — has unfairly competed in trade in violation of chapter 93A, §§ 2 and 11 (count one) and Massachusetts common law (count two).

The parties filed cross motions for summary judgment on the claims against them.¹ Pursuant to 28 U.S.C. § 636(b)(1)(B), the matter was referred to Magistrate Judge Michael Ponsor for report and recommendation (resulting in the "Magistrate Judge's Report" or "the Report"). The Magistrate Judge recommended denying defendant's motion for summary judgment on plaintiff's copyright and state law claims; however, he recommended granting summary judgment for defendant on plaintiff's Lanham Act claim. With respect to defendant's counterclaims, the Magistrate Judge recommended granting plaintiff the summary judgment that it seeks.

Both parties have objected to certain portions of the Magistrate Judge's Report. Defendant objects to two specific statements in the Report's fact section and he reiterates to this Court his argument that plaintiff's copyright infringement claim is barred by laches and estoppel. Defendant also objects to the recommendation that plaintiff be granted summary judgment on defendant's chapter 93A counterclaim. In turn, plaintiff objects to the recommendation that defendant be granted summary judgment on plaintiff's Lanham Act claim. The Court will review these issues de novo. 28 U.S.C. § 636(b)(1). Those portions of the Report to which neither party has specifically objected will be adopted without further discussion.

II. FACTUAL BACKGROUND

The Magistrate Judge's Report relates in detail the facts relevant to this suit and, with the exception of two specific objections by defendant, the parties have accepted his summary as accurate. For purposes of this Memorandum and Order, the Court will describe briefly the factual background of this dispute, reiterating in more detail those facts central to the parties' objections. Additional facts, not immediately pertinent to the issues before this Court, may be found in the Magistrate Judge's Report.

A. Background Facts

This case arises from a longstanding dispute between the parties concerning Poli's alleged misuse of Boothroyd and Dewhurst's intellectual property. Poli and Dewhurst were originally colleagues and collaborators in research in the University of Massachusetts at Amherst's Department of Mechanical Engineering. From 1973 to 1982, they collaborated on research in the engineering field of Design for Manufacturability and, at least through 1978, in a sub-specialty, Design for Assembly ("DFA"). Magistrate Judge's Report at 5-6, citing Plaintiff's L.R. 18² at ¶ 2; Defendant's Opp.L.R. at ¶ 2; Transcript of Hearing on Cross-Motions for Summary Judgment at 12 (Sept. 7, 1990) ("T.R.").

From 1978 through 1981, Boothroyd served as investigator and Poli as co-principal investigator on a National Science Foundation ("NSF") funded "Design for Manufacturability" research program which included a DFA component. The parties dispute the extent of Poli's contribution to DFA-related research under the grant, see infra at page 676, but they do not dispute that there were two tangible products of the research program: a handbook entitled "Design for Assembly" ("NSF Handbook") and a software program ("NSF Software"). Neither of these was protected by copyright. Magistrate Judge's Report at 6-7.

Dewhurst arrived at the University of Massachusetts as a visiting professor in 1980 and began collaborating with Boothroyd on various DFA-related projects. Id. at 7.

Subsequent to 1981, NSF declined to provide any additional funding for DFA research. However, Boothroyd and Dewhurst continued to collaborate in the field, spending 1981 through 1982 on the development of a microcomputer version of a software program, titled "Design for Assembly Software Tool Kit," ("DFA Software") intended to assist industrial designers in evaluating the difficulty of assembling their products. Id. Although defendant suggests that at least some of this work was done while Professor Boothroyd was still expending NSF funds, see Defendant Poli's Objections to the Magistrate's Report and Recommendation at 3-4 (Jan. 28, 1991), citing Boothroyd Deposition at 241-48 (attached to Defendant's Motion for Summary Judgment (July 2, 1990)), defendant does not dispute that this software program contained original copyrightable material in addition to material from the NSF Software. Boothroyd and Dewhurst also published a handbook, "Design for Assembly," incorporating material from the NSF Handbook but also containing original material.

In December 1983, to exploit burgeoning industry interest in their research and its tangible products, Boothroyd and Dewhurst incorporated B & D, Inc. to market their DFA Software and related items. Magistrate Judge's Report at 8. The copyrights in Boothroyd and Dewhurst's various DFA-related projects were assigned to the corporation. Id. Subsequently, in 1985, Boothroyd and Dewhurst left the University of Massachusetts and joined the faculty at the University of Rhode Island. They dissolved B & D, Inc. and incorporated BDI, plaintiff in this case, in Rhode Island. B & D Inc.'s copyrights were assigned to BDI. Id. at 8; 26-29.

B. Poli's Spreadsheet and Plaintiff's Allegations of Infringement

The Magistrate Judge has provided the following thorough account of the facts underpinning plaintiff's allegation of copyright infringement and Boothroyd and Dewhurst's response to defendant's allegedly infringing activities.

By 1983 Poli had become a consultant for Digital Equipment Corporation ("DEC"). Boothroyd avers that he and Dewhurst "allowed" Poli to use their copyrighted DFA Software, which was apparently being used by DEC with Boothroyd and Dewhurst's permission. Boothroyd Declaration (Aug. 16, 1990) ("Boothroyd Decl.") at ¶ 11. He asserts that, without their knowledge or approval, Poli then created and distributed a so-called spreadsheet derived directly from Boothroyd and Dewhurst's DFA Software, thereby infringing on BDI's copyright. Specifically, plaintiff alleges that Poli copied the questions on the top of the spreadsheet from those which appear on the screen displays of BDI's Software. Poli also used the novel "partial silhouettes" that Boothroyd and Dewhurst had created to function along with the questions to allow programmers to make the design calculations more quickly. Id. at ¶¶ 8 and 11.

Adding insult to injury, at least from plaintiff's point of view, Poli copyrighted this derivative work and affixed a 1983 copyright notice to the spreadsheet naming himself as author and copyright owner. Id. at ¶ 11; Plaintiff's Exhibit 14 (copy of Poli's registration form No. TX 1-493-573) attached to Plaintiff's Opposition to Defendant's Motion for Summary Judgment (Aug. 16, 1990) . Dated October 30, 1984, this copyright registration not only lists Poli as the author of the entire spreadsheet but also fails to indicate the existence of any pre-existing materials upon which his work was based. Id.

Plaintiff also asserts that defendant admits that he "adapted" the questions directly from the DFA Software. Plaintiff's L.R. 18 at ¶ 4. The one-page deposition excerpt cited by plaintiff indicates that defendant concedes that he copied the questions "verbatim" from software he identifies as being produced "during the 1977-1982 NSF grant." Plaintiff's Exhibit 8 (Poli Deposition at I:95³) attached to Plaintiff's Motion for Summary Judgment on Defendant's Counterclaims (June 29, 1990).

For his part, Poli does not dispute that he prepared the 1983 spreadsheet to be used in conjunction with Boothroyd and Dewhurst's copyrighted DFA software. Defendant's L.R. 18 at ¶ 17. However, he insists that his spreadsheet was "adapted, not derived" from software "developed in part under the NSF grant." Defendant's Opp.L.R. 18 at ¶ 4, citing Poli Deposition at I:92-96.

....

In 1984 B & D, Inc. learned that Poli had also prepared a software package for DEC entitled "Electronic Spreadsheet," believed by plaintiff to be based upon both the derivative 1983 Poli spreadsheet as well as plaintiff's copyrighted DFA Software and Handbook. The title page of the electronic spreadsheet actually lists Poli as one of three co-authors and indicates that DEC owns the 1984 copyright. See Plaintiff's Exhibit 16 attached to Plaintiff's Opposition to Defendant's Motion for Summary Judgment) . Through its attorney, William E. Hart ("Hart"), plaintiff's predecessor immediately complained to Poli. See Plaintiff's Exhibit 15, attached to Plaintiff's Opposition to Defendant's Motion for Summary Judgment (Hart Letter to Poli of 10/19/84) .

This letter was forwarded to Poli's attorney, John J. Dempsey ("Dempsey"), who replied on November 1, 1984 that Poli "has absolutely no

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