Fonar Corp. v. Magnetic Resonance Plus, Inc.

• Decision Date: 27 March 1996
• Docket Number: No. 93 Civ. 2220.,93 Civ. 2220.
• Parties: FONAR CORPORATION, Plaintiff, v. MAGNETIC RESONANCE PLUS, INC., and Robert Domenick, Defendants.
• Court: U.S. District Court — Southern District of New York

920 F. Supp. 508

FONAR CORPORATION, Plaintiff, v. MAGNETIC RESONANCE PLUS, INC., and Robert Domenick, Defendants.

No. 93 Civ. 2220.

United States District Court, S.D. New York.

March 27, 1996.

COPYRIGHT MATERIAL OMITTED

Laurence Shiff, Shiff & Tisman, New York City, for Plaintiff.

Lateef Mtima, Coudert Brothers, New York City, for Defendant.

OPINION

MOTLEY, District Judge.

In the instant case the court is asked to rule upon the degree of specificity with which a plaintiff seeking to enforce a copyright for computer software must describe that work. As the following discussion shows, plaintiff has failed to describe its purportedly copyrighted material in such a way that would reveal the substance of the protected work. Accordingly, for the reasons set forth herein, defendants' motion for summary judgment is granted and plaintiff's copyright claims under federal law, as well as the supplemental state law claims of unfair competition, are dismissed in their entirety.

This motion for summary judgment is being considered by the court after all discovery has been completed, a joint pre-trial order has been filed, each party's pre-trial brief has been filed and the case set for trial.

BACKGROUND

Plaintiff Fonar Corporation, (hereinafter "plaintiff"), is a corporation organized under the laws of the State of Delaware, with its principal place of business in Melville, New York. (Complaint at ¶ 3.) Plaintiff is engaged in the research, development, production and sale of Magnetic Resonance Imaging (MRI) systems used for medical diagnostic purposes. To maintain these systems, plaintiff has developed "Maintenance Software" for its systems' computers and schematic diagrams of the systems' hardware. (Complaint at 3-6.) Plaintiff describes the software that is the subject of this suit as follows:

The term "Maintenance Software" means software used in or with the system to aid in its installation, maintenance or repair, and includes all software other than operational software. Maintenance Software includes but is not limited to "diagnostic and maintenance software," "field engineering utilities software" and "editors and utilities software."

(Complaint at ¶ 13 n. 1.)

Plaintiff alleges that the defendants "willfully infringed the copyright in plaintiff's Maintenance Software by copying, reproducing, selling, and/or offering it for sale." (Complaint at ¶ 28.) Plaintiff also alleges that defendants engaged in unfair competition and trade secret misappropriation through the use and copying of plaintiff's Maintenance Software and schematic diagrams. (Complaint at ¶¶ 32-36.) Plaintiff seeks, inter alia, declaratory and injunctive relief, either actual or statutory damages, punitive damages, costs and attorneys' fees. (Complaint at 12-16.)

Defendant Magnetic Resonance Plus, is a corporation with offices in New York and California. Defendant Robert Domenick is the corporation's president. (Collectively, "defendants"). (Complaint at ¶¶ 4-5; Answer at ¶¶ 4-5).

The Instant Motion

By motion in limine, defendants sought an order dismissing plaintiff's copyright claims on the ground that plaintiff failed to describe the material that is the subject of the instant action with sufficient particularity to sustain a claim for copyright infringement.

Central to defendants' motion is its argument that the Second Circuit's prior ruling in Fonar Corp. v. Deccaid Services, Inc., 983 F.2d 427 (2d Cir.1993), is controlling on the issue sub judice. Defendants argue that "the Court of Appeals for the Second Circuit in Deccaid, supra has already ruled that plaintiff's description of the Fonar Maintenance Software is too vague and insufficient to provide a basis for any injunctive and/or monetary recovery." (Defs.Mem.Supp.Mot. in Lim. at 1.) In Deccaid, supra, the Second Circuit reversed and vacated several of the district court's orders in that case — the initial temporary restraining order, preliminary injunction and subsequent contempt orders — which relied upon and incorporated plaintiff's definition of its software.¹ The Second Circuit determined that this definition, because it was vague and overbroad, could not form the basis of injunctive relief. In addition, the court found that the violation of any restraining order or injunction based thereon could not serve as a basis for a finding of contempt. Id. at 429-430.

When pressed at oral argument on the motion in limine, counsel for plaintiff failed to characterize the software in any greater detail:

Maintenance software is the broad piece of software ... which is comprised of three different segments, it is like major chapters. One is a chapter for diagnostic software, which diagnoses materials; one is editors, which changes certain parameters on the machine; one is field engineering utilities, which does something else.

(R. at 44; See also, R. at 47).²

Counsel for plaintiff stated further that once the jury had ruled in plaintiffs favor, he would provide the court with a "proposed injunction form ... running about 40 pages in length, single-spaced" which would set forth the programs covered by the Maintenance Software definition. (R. at 45-46, 63-64.)

After oral argument, defendants noted a contradiction in the definition originally set forth in the complaint. Counsel for defendants pointed out that at his deposition one of plaintiff's witnesses admitted that there were elements of the Maintenance Software that were not "operational software" and at the same time were not copyrighted as part of the Maintenance Software. (Letter of Counsel for Defendants, dated November 21, 1995, at 2.) This testimony illuminated a contradiction in plaintiff's definition: the original definition stated that all software that was not operational software was included in plaintiff's purportedly copyrighted Maintenance Software. (See Complaint at ¶ 13 n. 1.) In response to this allegation, plaintiff's counsel argued that the "copyright registration clearly applies only to the Diagnostic, Editors and Field Engineering Menu Software ... The other software included in the Maintenance Software but not included in the copyright registration is "MAPPING" and "SHIMAGING". Fonar has made no claim against defendants for infringement of these pieces of software." (Letter of Counsel for Plaintiff, dated November 22, 1995, at 3 (emphasis added)).

Because of the shifting nature of the matters before the court concerning defendants' motion, the court converted the motion to dismiss to one for summary judgment, allowing the parties to supplement their submissions. See November 28, 1995 Order.

Plaintiff's Supplemental Information

Even though plaintiff has had every opportunity to supplement the definition of the software which is the subject of this action, except where its statements demonstrate the internal contradictions of the definition, plaintiff has not departed in any significant way from the original definition contained in the complaint.

First, in its supplemental submission, plaintiff provides several "directories" of programs which purportedly make up the contents of the Maintenance Software. These are set forth without any descriptive information and in the most cryptic of terms, rendering them meaningless to the lay eye. (Wolf Aff. at Exh. J.) Plaintiff has also submitted "print screens" that purport to show that defendants utilized the copyrighted software, although these are similarly puzzling, showing only line after line of computer language text mixed with clusters of meaningless terms. (See Id. at Exh. K.) Lastly, an affidavit was submitted by one of plaintiff's employees that failed to provide any greater detail than that which was originally set forth in the complaint. See Wolf Aff. Additionally, plaintiff failed to clarify the issue described above concerning the apparent internal contradiction in plaintiff's description of its work. In brief, plaintiff has not supplemented in any significant way the basic definition originally contained in the pleadings, even though serious questions have been raised concerning its validity.

ANALYSIS

I. SUMMARY JUDGMENT STANDARD.

A motion for summary judgment shall only be granted "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.Proc. 56(c). See also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986).

"The plain language of Rule 56(c) mandates the entry of summary judgment, after adequate time for discovery and upon motion, against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986). Where no such showing is made, "the moving party is `entitled to a judgment as a matter of law.'" Id., at 323, 106 S.Ct. at 2552. Moreover, "a complete failure of proof concerning an essential element of the nonmoving party's case necessarily renders all other facts immaterial. Id. (emphasis added).

Although the court must view the inferences to be drawn from the facts in the light most favorable to the non-movant, Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986), in order to defeat the motion the non-moving party must still establish the existence of a genuine issue of material fact for trial and may not merely rely upon the pleadings in order to overcome the motion. Fed.R.Civ.Proc. 56(e); Celotex Corp., 477 U.S. at 322-324, 106 S.Ct. at 2552-53; Christian Dior-New York, Inc. v. Koret, Inc., 792 F.2d 34, 37 (2d Cir.1986). Moreover, "`"mere conclusory allegations or denials"' in legal memoranda or oral argument are...