Intercontinental Dictionary Series v. De Gruyter, SA CV 92-667 AHS (RWRx).

• Decision Date: 14 May 1993
• Docket Number: No. SA CV 92-667 AHS (RWRx).,SA CV 92-667 AHS (RWRx).
• Citation: 822 F. Supp. 662
• Court: U.S. District Court — Central District of California
• Parties: INTERCONTINENTAL DICTIONARY SERIES, Plaintiff, v. Mouton DE GRUYTER et al., Defendants.

822 F. Supp. 662

INTERCONTINENTAL DICTIONARY SERIES, Plaintiff, v. Mouton DE GRUYTER et al., Defendants.

No. SA CV 92-667 AHS (RWRx).

United States District Court, C.D. California.

May 14, 1993.

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Thomas George Key, Bartholomew Henry & Key, Tustin, CA, for plaintiff.

Aton Arbisser, et al., Kaye Scholer Fierman Hays Handler, Sean Riley, et al., Christensen White Miller Fink Jacobs, Los Angeles, CA, for defendants.

MEMORANDUM OPINION ON ORDER GRANTING DEFENDANTS' MOTION TO DISMISS

STOTLER, District Judge.

I. INTRODUCTION

On October 8, 1992, plaintiff Intercontinental Dictionary Series ("IDS") filed the complaint in this matter. The complaint asserts causes of action for copyright infringement, declaratory relief, breach of contract, negligence, interference with contract, interference with prospective economic advantages, fraud and deceit, breach of fiduciary duties, and civil conspiracy. On January 14, 1993, the action was stayed by stipulation and order between IDS and defendants Mouton de Gruyter, Walter de Gruyter & Co., Marie-Louise Liebe-Harkfort, H. Hassenpflug, and Werner Winter (collectively "the German defendants").

On January 19, 1993, defendants the Australian National University ("ANU"), Sir Gordon Jackson, the Research School of Pacific Studies ("RSPS"), R. Gerald Ward, Andrew Pawley, and Darrell Tryon (collectively "the ANU defendants") filed a Motion to Dismiss for Lack of Personal and Subject Matter Jurisdiction, or, in the Alternative, on the Basis of Forum Non Conveniens. Defendants concurrently filed a Request for Judicial Notice. Plaintiff filed opposition to the Motion to Dismiss, and its own Request for Judicial Notice, on February 2, 1993. On February 16, 1993, the ANU defendants filed their reply and an Objection to Evidence Offered in Support of Plaintiff's Opposition. The matter came on for hearing on the Court's March 1, 1993 calendar; after oral arguments from counsel, the Court granted the parties' unopposed Requests for Judicial Notice pursuant to Fed.R.Evid. 201, and took the ANU defendants' Motion to Dismiss and the Objection to Evidence under submission.

II. FACTUAL BACKGROUND

Headquartered in Irvine, California, IDS is a private, unincorporated affiliation of linguistic scholars, many from prestigious universities throughout the world. The projects undertaken by IDS focus on the compilation and eventual publication of massive linguistic dictionaries covering languages spoken in various geographic regions of the world. The goal of IDS is to create and publish a series of such dictionary volumes using an orthographically uniform word list accessed through a computer database. Each volume in the series will be linked using the methodology and format developed by Dr. Mary Ritchie Key, the general editor of IDS' series of dictionaries.

In connection with its work, IDS has completed a manuscript entitled "Intercontinental Dictionary Series, Volume I: South American Indian Languages." As part of its planned series, IDS has also compiled a yet unpublished manuscript entitled "Intercontinental Dictionary Series, Volume II: Austronesian Languages" (the "IDS volume"), which is the centerpiece of this litigation.¹ Approximately half of the contributors to the latter Austronesian languages volume are citizens of the United States. Furthermore, plaintiff has obtained a Certificate of Registration of Copyright on this IDS volume.

The ANU, the national university of Australia, was created by the Australian National University Act of 1946. One of the statutorily enumerated functions of the ANU is to "encourage, and provide facilities for, postgraduate research and study, both generally and in relation to subjects of national importance to Australia." The Act, ¶ 6(a). The RSPS is a division of the ANU and the individual ANU defendants are employed in various capacities by the ANU and/or the RSPS. According to the complaint, defendant Jackson is the chancellor of the ANU, defendant Pawley is the Head of the Department of Linguistics at the ANU, defendant Tryon is the acting Head of the Department of Linguistics at the ANU, and defendant Ward is the Director of the RSPS.

On an unspecified date, the Australian government began the funding of a project in furtherance of the ANU's statutorily-defined objectives to research matters of importance to Australia and the surrounding Pacific region. The project resulted in the development of a yet unpublished work entitled the Comparative Austronesian Dictionary ("the CAD treatise"). Accompanying the CAD treatise are associated computer databases and word lists. Like the IDS volume, the CAD treatise is a linguistic dictionary that documents the Austronesian family of languages. According to defendants, at no time did any entity other than the ANU and its staff membership contribute any linguistic materials to the development of the CAD treatise. The project that culminated in the CAD treatise was funded by the Australian national government with more than 800,000 Australian dollars.

In its complaint, IDS asserts that it owns the CAD treatise, the related computer database, and the word lists covering the Austronesian languages for the following reasons: (1) it applied for registration of an early draft manuscript; (2) it developed the concept for a series of linguistic dictionary volumes covering different regions of the world; and (3) it hired Dr. Tryon as "volume editor" to develop the Austronesian manuscript as a volume of IDS's series of linguistic dictionaries. Plaintiff further alleges that the ANU defendants are infringing its copyright by developing the Austronesian materials to final form in the CAD treatise, by making an agreement with the German defendants to publish the CAD treatise, by representing that the CAD treatise is the property of the ANU defendants, and by refusing to turn over the CAD treatise to IDS. The gravamen of plaintiff's complaint is that the ANU defendants, most notably Dr. Tryon, have pirated the research and development undertaken in collaboration with IDS for its volume on the Austronesian languages and have created the CAD treatise as an infringing "spin-off" of the IDS volume.

III. THE PARTIES' CONTENTIONS

A. The ANU Defendants' Position:

The ANU defendants argue that dismissal of the action is mandated under the Foreign Sovereign Immunities Act ("FSIA"), 28 U.S.C. § 1602-11, because the ANU and the RSPS are agents or instrumentalities of the Australian government. MOL, Inc. v. People's Republic of Bangladesh, 736 F.2d 1326 (9th Cir.1984); Gerritsen v. Escobar Y. Cordova, 721 F.Supp. 253 (C.D.Cal.1988). Defendants note that the ANU was created by the Australian government and is treated as a governmental agency in Australian legislation. Moreover, defendants contend that the FSIA applies to the individual ANU defendants, since they are all sued in their official capacity as employees of the ANU.

Defendants continue that none of the exceptions to the FSIA apply to this case. Specifically, the ANU defendants argue that the "commercial activity" exception is inapplicable because none of the parties undertook the CAD project for profit. Schoenberg v. Exportadora de Sal., S.A., 930 F.2d 777 (9th Cir.1991). According to defendants, the "international takings" exception does not deprive them of immunity since the exception pertains only to tangible property and because the property at issue was never present in the United States. De Sanchez v. Banco Central de Nicaragua, 770 F.2d 1385 (5th Cir.1985). Finally, the ANU defendants state that the "noncommercial torts" exception does not apply to the present case since the tort and the injury occurred outside the United States. Persinger v. Islamic Republic of Iran, 729 F.2d 835 (D.C.Cir.1984).

Defendants next submit that the action should be dismissed because the Court lacks personal jurisdiction over the ANU defendants because they have no "minimum contacts" with the United States or California. Meadows v. Dominican Republic, 628 F.Supp. 599 (N.D.Cal.1986). They argue that general jurisdiction is absent since the defendants lack the "continuous and systematic" contacts with the forum required for the exercise of such jurisdiction. Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414, 104 S.Ct. 1868, 1872, 80 L.Ed.2d 404 (1984). Furthermore, defendants state that the exercise of specific personal jurisdiction fails under the Ninth Circuit's three part test in Haisten v. Grass Valley Medical Reimbursement, 784 F.2d 1392 (9th Cir.1986): first, there is no affirmative conduct promoting business within the forum state, Decker Coal Co. v. Commonwealth Edison Co., 805 F.2d 834 (9th Cir. 1986) and Dr. Tryon's contacts fall short of purposeful availment; second, the claims do not arise out of defendants' forum related activities, as evidenced by the complaint which repeatedly refers only to activities in Australia and Germany; and third, the exercise of jurisdiction would not be reasonable.

The ANU defendants also state that dismissal is warranted under the doctrine of forum non conveniens, because there is an adequate alternate forum and the balance of public and private factors weighs in favor of dismissal. Lockman Foundation v. The Evangelical Alliance Mission, 930 F.2d 764 (9th Cir.1991). Defendants argue that Australia offers comparable relief: the ANU defendants could sue and be sued, and individuals claiming copyright interests can pursue protection in the Australian Federal Court. Defendants further submit that Australian copyright law governs this case. In addition, the ANU defendants state that Australian courts could subpoena documents and witnesses, whereas the district court in California could not. Thus, defendants conclude that the action should be dismissed on forum non conveniens grounds.

Moreover, the ANU defendants argue that because United States...