Kepner-Tregoe, Inc. v. Executive Development, Inc.
| Decision Date | 13 December 1999 |
| Docket Number | Civ. No. 97-3473(JAG). |
| Citation | 79 F.Supp.2d 474 |
| Parties | KEPNER-TREGOE, INC., Plaintiff, v. EXECUTIVE DEVELOPMENT, INC., Defendant. |
| Court | U.S. District Court — District of New Jersey |
Carl G. Weisenfeld, Norris, McLaughlin & Marcus, PC, Somerville, NJ, for plaintiff.
Robert J. Stickles, Carpenter, Bennett & Morrissey, Newark, NJ, for defendant.
Peter M. Lancaster, Dorsey & Whitney, LLP, Minneapolis, MN.
Weingarten, Schurgin, Gagnebin & Hayes, LLP, Paul J. Hayes, Dean G. Bostock, Boston, MA.
This matter comes before the Court on the motion for summary judgment filed by defendant, Executive Development, Inc. ("EDI"), pursuant to Fed.R.Civ.P. 56(c), against plaintiff, Kepner-Tregoe, Inc. ("Kepner"). Both parties have submitted affidavits and statements of uncontested facts, pursuant to L.Civ.R. 56.1. For the following reasons, this Court shall grant EDI's motion for summary judgment.
This is a copyright infringement action. Kepner specializes in strategic and operational decision-making. Since 1958, Kepner has marketed its management training programs and related instructional materials internationally. Kepner is the owner of, inter alia, U.S. Copyright Registration certificate No. A.-550,878 for its instructional materials referred to as GENCO II, and U.S. Copyright Registration certificate No. A-550,880 for its instructional materials referred to as APEX II.
EDI has published one or more works in the United States entitled "DECISION FOCUS". On July 15, 1997, Kepner instituted this action for copyright infringement against EDI, alleging that EDI's DECISION FOCUS materials infringe its registered copyrights for GENCO II and APEX II.
EDI filed its Answer and Counterclaim on September 19, 1997. In its Counterclaim, EDI alleges that Kepner commenced the present action for the purpose of monopolizing commerce in violation of the Sherman Antitrust Act. See 15 U.S.C. § 2 (1994).
On December 12, 1997, Kepner moved to dismiss EDI's counterclaim or, in the alternative, for summary judgment, on the ground that under the Noerr-Pennington doctrine,1 Kepner is immune from antitrust liability for filing this infringement action. With its reply brief, Kepner submitted the Second Affidavit of Dean G. Bostock. EDI moved to strike that affidavit on the grounds that Kepner raised issues and presented factual material in its reply brief and accompanying affidavit that it did not raise in its initial brief.
On August 26, 1998, this Court granted Kepner's motion for summary judgment dismissing EDI's counterclaim and denying EDI's motion to strike. On May 17, 1999, EDI filed this motion seeking summary judgment on four separate grounds against Kepner. EDI alleges that each of the four grounds provides an independent and adequate basis for summary judgment regarding Kepner's copyright infringement claims. Specifically, EDI seeks summary judgment because:
(1) Kepner's unexplained and inexcusable delay of more than twenty years before filing this lawsuit over claims that it first asserted back in 1975 bars its claims under well-established laches doctrine;
(2) Kepner's failure to establish any original content in its allegedly copyrighted materials beyond preexisting public domain (and thus unprotectable) materials defeats its claims;
(3) Kepner's failure to produce evidence of EDI either copying or having access to its allegedly copyrighted materials defeats its claims; and because
(4) Kepner's inability to establish the threshold element of any copyright case — what the allegedly copyrighted materials are — defeats its claims.
See Def.'s Br. at 1.
In 1958, Drs. Charles Kepner and Benjamin Tregoe founded Kepner. Kepner has been in the business of providing courses that train employees and managers in how to make decisions and how to solve problems that occur in the workplace. Kepner offers its courses throughout the United States and in several other countries. Since its inception, Kepner has created a number of sets of written materials that are used by people who attend Kepner's courses. These materials are protected by copyright, and Kepner has obtained U.S. Copyright Registrations covering the materials.
The copyrighted materials, which Kepner alleges that EDI infringed, constitute those materials used for Kepner's courses known as APEX II and GENCO II. The Copyright Office issued Copyright registration certificates for APEX II and GENCO II in 1974. The only EDI materials, which are the subject of Kepner's infringement claim in this case are EDI's DECISION FOCUS materials and related software. The DECISION FOCUS materials relate to courses on problem-solving and decision-making skills. EDI's DECISION FOCUS materials, which were published in 1985, consist of an eighty-two (82) page participant's manual and related software.
Kepner claims that it obtained a copy of EDI's DECISION FOCUS software in May 1997. Kepner filed this complaint against EDI in July, 1997. Kepner claims further that it first obtained a copy of the DECISION FOCUS manual during discovery in this case. Set forth below is the comparison of Kepner and EDI materials that this court included in its August 26, 1998, dismissal of EDI's antitrust counterclaim:
POTENTIAL PROBLEM ANALYSIS WORKSHEET
KEPNER'S WORKSHEETS
EDI'S MATERIALS
SITUATION ANALYSIS
EDI'S MATERIALS
Order signed by the Honorable Joseph A. Greenaway Jr., dated August 25, 1998, and filed August 26, 1998, (quoting Bostock Decl., vol. two, Ex. 10, at 8-9) dismissing EDI's counterclaim.
EDI contends that as early as 1975, Kepner accused Millard Robert Guberud ("Guberud")2 and EDI (then called Training Associates, Inc.) of copyright infringement. Specifically, EDI claims that in 1975, Kepner alleged that EDI was "teaching courses on decision-making and problem analysis which infringed directly and blatantly on [Kepner-owned] copyrights." Def.'s Br. at 6. In response to Kepner's allegation, EDI requested promptly that Kepner identify which EDI materials violated Kepner copyrights. See id. An exchange of correspondence ensued. See id.
By letter dated May 28, 1975, EDI sent to Kepner's counsel, Mr. Jaffin ("Jaffin"), its then-current SITUATION MANAGEMENT materials.3 In a follow-up telephone conversation between EDI's lawyer, Mr. Johnson ("Johnson"), and Jaffin, Jaffin confirmed that he had received the SITUATION MANAGEMENT materials. Kepner alleges that Jaffin notified EDI that Kepner had concerns regarding EDI's SITUATION MANAGEMENT materials.
EDI contends that neither Johnson nor anyone else at EDI heard any further complaints from Kepner until 1996 — a period of more than twenty years. EDI claims further that Kepner's silence of twenty years led EDI to conclude that Kepner had no objection to EDI's SITUATION MANAGEMENT materials. According to EDI, the SITUATION MANAGEMENT materials include all of the same concepts and virtually all of the same expressions about which Kepner now complains.
Specifically, EDI claims that both sets of materials combine four modules successively devoted to situation analysis, problem analysis, decision analysis, and problem prevention. EDI asserts that its current materials include worksheets for problem-solving, decision-making, and problem-prevention that parallel those used in connection with EDI's 1975 publication. EDI claims further that Kepner has not identified any infringing expression in current EDI materials that is not similar to the expression in EDI's 1975 materials.
EDI argues that it has made many decisions and taken numerous actions since 1975 in reliance upon its understanding that Kepner's two-decade silence meant that Kepner did not object to EDI's SITUATION MANAGEMENT and DECISION FOCUS materials. In addition, EDI argues that the services offered with the SITUATION MANAGEMENT and DECISION FOCUS materials since 1975 have constituted between 60% and 100% of EDI's revenues. Moreover, David and Mary Osgood, the two current principals of EDI, argue that they would not have devoted their careers to building a business based primarily on the DECISION FOCUS materials had Kepner successfully pursued its claims of infringement in 1975.4 Furthermore, EDI contends that it has committed itself recently to contractual and other obligations to provide services based upon the DECISION FOCUS materials. Specifically, EDI claims that it invested over $300,000 to develop and update software based upon the DECISION FOCUS materials.
EDI argues that Genco II and Apex II are public domain expressions. EDI points out that the Copyright Registration Certificate for Genco II No. A-550,878, cites "previously published and copyrighted works collectively entitled `Genco'". EDI points out further that the Copyright Registration Certificate for Apex...
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