Herbert v. National Academy of Sciences, 91-7099

CourtUnited States Courts of Appeals. United States Court of Appeals (District of Columbia)
Writing for the CourtBefore EDWARDS, SENTELLE, and RANDOLPH; SENTELLE
Citation297 U.S. App. D.C. 406,974 F.2d 192
Parties, 1992 Copr.L.Dec. P 26,982 Victor HERBERT, Appellant, v. NATIONAL ACADEMY OF SCIENCES. District of Columbia Circuit
Docket NumberNo. 91-7099,91-7099
Decision Date08 September 1992

Michael K. Botts, for appellant.

Calvin H. Cobb, Jr., with whom Maureen O'Keefe Ward and James R. Wright were on the brief, for appellee.

Before EDWARDS, SENTELLE, and RANDOLPH, Circuit Judges.

Opinion for the Court filed by Circuit Judge SENTELLE.

SENTELLE, Circuit Judge:

In proceedings before the District Court, Dr. Victor Herbert alleged that the National Academy of Sciences infringed upon certain of his copyrighted works while preparing the 10th edition of the Recommended Dietary Allowances. The Academy countered by contending that the District Court lacked subject matter jurisdiction to hear Herbert's claim. Without ruling on the merits of Herbert's case, the District Court found that it was indeed without jurisdiction and, thus, granted the Academy's motion to dismiss. Herbert v. National Academy of Sciences, No. 90-361, 1991 WL 387901, 1991 U.S.Dist. LEXIS 7074 (D.D.C. May 22, 1991). We now review that dismissal and, for reasons detailed below, affirm.


The National Academy of Sciences ("NAS" or the "Academy") is a private, non-governmental, 1 non-profit corporation dedicated to exploring science and its use for the general welfare. It is occasionally called upon by the government to perform certain studies and investigations. One such study, contracted for in 1941, involved the preparation of guidelines regarding the nutrient needs of healthy people. Widely known as the Recommended Dietary Allowances ("RDAs"), these guidelines have been updated periodically by the NAS pursuant to subsequent governmental contracts. It is a 1980 contract for the crafting of a 10th edition to the RDAs that forms the background of this case.

Under the terms of the 1980 contract (the "first contract"), NAS was to provide the National Institutes of Health ("NIH"), a governmental agency, a 10th set of RDAs for which it would be paid $582,815. The Academy subsequently convened a volunteer committee (the "Committee"), including Victor Herbert ("appellant" or "Herbert"), to compile and process the necessary scientific information. In due course the Committee completed a final draft and submitted its work to an internal peer review panel. A dispute apparently arose between the Committee and its reviewers in 1985 regarding the proposed allowances for vitamins A and C. The result: NAS refused to adopt the Committee's work as its own, discharged the Committee, and reported to the government its inability to deliver the 10th RDAs as promised.

At this point, Herbert, apparently an author of various chapters in the 10th edition, copyrighted portions of the Committee draft in his name. Thereafter, he wrote Meanwhile, the government offered the Academy three options for remedying its breach of the first contract: produce a new 10th edition, presumably by starting afresh with different authors; submit the existing draft with a full explanation of the impasse between the Committee and its reviewers; or, return the $582,815.

                [297 U.S.App.D.C. 408] two letters--one to the former chairman of the Committee and another to the president of the NAS--asserting ownership over these portions of the Committee's draft.   Both letters indicate on their face that a copy was sent to officials at NIH

In early 1986, NAS indicated that it wished to exercise the second option, sending NIH a summary of steps it had taken to resolve the differences between the Committee and reviewers, along with various drafts that included Herbert's copyrighted materials. In December of the same year, the head of the National Institute of Diabetes and Digestive and Kidney Diseases ("NIDDK"), an arm of NIH, suggested that NIDDK intervene to "play a constructive role" in helping salvage the 10th RDAs, using existing material produced by the Committee. A month later, after a meeting between NIH and NAS, the Academy's executive director memorialized his understanding of the government's position, writing that NIH "made it quite clear ... that they 'own' the draft documents which we have given them ... and that they have ... the clear right to publish material drawn from them." NAS Appendix ("NAS App.") at 79.

By March 1987, NIH completed a review of the Committee's draft and its dispute with the peer review group, concluding that the draft was scientifically sound and should be published. Because the Committee's work had not yet been through a final editing process and was now two years old, however, NIH decided that it needed polishing and a bit of updating. To complete these tasks, NIH again turned to the Academy, entering into a new contract (the "second contract") in 1988 for the "revision and update of a preliminary document prepared by an earlier [NAS] committee" at an additional cost of $162,745. NAS App. at 120.

As the Academy finished this project in 1989, it approached the government contracting officer, Ms. Shirley Shores, for permission to copyright the completed document in the Academy's name; this request specifically stated that the copyright would cover work produced by the Committee under the first contract. Permission was granted and NAS produced a final copy of the 10th RDAs for the government in October 1989, selling approximately 25,000 additional copies to the general public.

Four months later, Herbert filed suit against the Academy, claiming that it had infringed upon his copyright interest in materials he had drafted as a member of the Committee by using them in the final 10th RDAs. Subsequently, the Academy moved to dismiss for lack of subject matter jurisdiction pursuant to 28 U.S.C. § 1498(b). In its view, the government had authorized any alleged infringement in connection with the 10th RDAs and, consequently, under § 1498(b), Herbert's exclusive remedy was by action against the United States in Claims Court. Section 1498(b) provides, in pertinent part, that

whenever the copyright in any work protected under the copyright laws of the United States shall be infringed by the United States by a corporation owned or controlled by the United States, or by a contractor, subcontractor, or any person, firm, or corporation acting for the Government and with the authorization or consent of the Government, the exclusive remedy of the owner of such copyright shall be by action against the United States in the Court of Claims....

28 U.S.C. § 1498(b). (Emphasis added.)

In October 1990, the District Judge held oral argument on the motion to dismiss. Ultimately, he decided against granting a dismissal at that time, though he did direct the Department of Health and Human Services (HHS), NIH's parent agency, to show cause why it, rather than the Academy, was not the proper defendant in this case; he also asked HHS to show why the case ought not be dismissed for lack of subject matter jurisdiction. At a show cause hearing Five months later, HHS switched course. In April 1991 it executed a modification to its second contract with NAS (the "modification"), providing that

                [297 U.S.App.D.C. 409]  in November 1990, HHS argued that it had not authorized the alleged infringement and, therefore, that § 1498(b) had no application to this case.   Indeed, it introduced a sworn declaration from contracting officer Shores indicating that she had never authorized any copyright infringement, nor was even informed of a copyright dispute

[t]he Government authorizes and consents to the infringement of any copyright in any work protected under the laws of the United States in performing this contract or any subcontract at any tier.

Herbert's Appendix ("Herbert App.") at 16. After HHS's change of heart, NAS quickly filed an amended motion to dismiss for lack of subject matter jurisdiction. It contended that whatever lingering doubts had previously existed about governmental authorization and, thus, the relevance of § 1498(b), were now surely settled. The District Court held another hearing after which it did agree to dismiss the case, holding that

[t]he evidence shows that the United States authorized the use of [any materials Herbert may have copyrighted].... Accordingly, [Herbert's] exclusive remedy lies in an action against the United States in the United States Court of Claims. Under [§ 1498(b) ], this Court lacks subject matter jurisdiction over this action, and the above-captioned case will be dismissed.

Herbert, No. 90-361, 1991 WL 387901, at * 4, 1991 U.S.Dist.LEXIS 7074, at * 10.

Herbert has now lodged this appeal claiming that the District Court erred in granting the dismissal on a variety of grounds. First, even assuming that the government did authorize the alleged infringement, Herbert suggests the District Court should have retained jurisdiction. In his view, even when applicable, § 1498(b) does not divest the District Court of jurisdiction; instead, it merely provides the Academy with an affirmative defense to pursue within District Court.

Alternatively, Herbert argues that the District Court's finding of governmental authorization is simply wrong: in his view of the factual record, NIH never consented to NAS's alleged infringement. Necessarily, then, § 1498(b) by its own terms is inapplicable and a dismissal based upon its provisions would be improper.

In addition to these two substantive attacks on the District Court's decision, Herbert contends a reversal is warranted to remedy violations of his procedural rights: he claims he received inadequate notice of the amended motion to dismiss; he also argues he was not permitted any opportunity to conduct discovery on the modification to the second contract.

We explore each of these arguments in turn.

A. The Nature of §...

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